Specimens Show Commercial Impression
The critical question in determining whether a trademark, as used in the specimens of record, functions as a trademark is the commercial impression it makes on the relevant public (e.g., whether the term sought to be registered would be perceived as a mark identifying the source of the goods or merely as an informational phrase). In re Aerospace Optico, Inc., 78 USPQ2d 1861, 1862 (TTAB 2006) ("the mark must be used in such a manner that it would be readily perceived as identifying the specified goods and distinguishing a single source or origin for the goods. . . . The mere fact that a designation appears on the specimen of record does not make it a trademark. . . . A critical element in determining whether matter sought to be registered as a trademark is the impression the matter makes on the relevant public." (Citations omitted)); In re Volvo Cars of North America Inc., 46 USPQ2d 1455, 1459 (TTAB 1998); In re Remington Products Inc., 3 USPQ2d 1714, 1715 (TTAB 1987); In re Morganroth, 208 USPQ 284, 287 (TTAB 1980). The specimen determines how consumers likely would perceive the subject matter sought to be registered. In re Aerospace Optico, Inc., 78 USPQ2d at 1862; In re The Signal Companies, Inc., 228 USPQ 956, 957 (TTAB 1986); In re Wakefern Food Corp, 222 USPQ 76, 77 (TTAB 1984).
In re Phoseon Technology Inc.(TTAB 2012).
Acceptable Specimens
GOODS (for a trademark): Acceptable specimens for goods (TMEP 904.03) include such items as “a label, tag, or container for the goods, or a display associated with the goods. A photocopy or other reproduction of a specimen of the mark as actually used on or in connection with the goods is acceptable.”
SERVICES (for a service mark): Acceptable specimens for services normally consist of advertisements, displays, or signage (TMEP 1301). A service mark specimen must show use of the mark “in the sale or advertising of services.” Trademark Act Section 45, 15 U.S.C. §1127; 37 C.F.R. §2.56. Therefore, a specimen is unacceptable if it does not show use of the service mark in relation to the identified services. There must be a direct association between the mark sought to be registered and the services specified in the application, with sufficient reference to the services in the specimen to create this association. In re Monograms America, Inc., 51 USPQ2d 1317 (TTAB 1999); In re Adair, 45 USPQ2d 1211 (TTAB 1997); In re Restonic Corp., 189 USPQ 248 (TTAB 1975); TMEP §§1301.04 et seq.
Unacceptable Specimens
Example of a poor specimen: One typical rejection of marks for t-
Note: A Supplemental Registration is a significant loss of rights (common law rights
as well), especially if it could have been avoided by using a better specimen. See
Comparison of Principal Register and Supplemental Register. A registration on the
Supplemental Registration is an admission that the mark is not inherently distinctive,
a slip in the foothold of common law rights. See Inherently-
Another example of a poor specimen is a copy of an advertisement or label that already
contains a ® even though the registrant is now just applying for the federal registration
for first time. Registration in a state of the United States does not entitle a person
to use the federal registration notice. Du-
Improper use of a federal registration symbol that is deliberate and intended to deceive or mislead the public is fraud. TMEP 906.02 Improper Use of Registration Symbol.
A copy of an applicant’s logo is an unacceptable specimen as evidence of actual trademark use unless it is a label. The applicant must submit a specimen showing the mark as it is used in commerce in relation to the goods. 37 C.F.R Section 2.56.
A service mark specimen must show use of the mark “in the sale or advertising of services.” Trademark Act Section 45, 15 U.S.C. §1127; 37 C.F.R. §2.56. Therefore, a specimen is unacceptable if it does not show use of the service mark in relation to the identified services. There must be a direct association between the mark sought to be registered and the services specified in the application, with sufficient reference to the services in the specimen to create this association. In re Monograms America, Inc., 51 USPQ2d 1317 (TTAB 1999); In re Adair, 45 USPQ2d 1211 (TTAB 1997); In re Restonic Corp., 189 USPQ 248 (TTAB 1975); TMEP §§1301.04 et seq.
The right to register a mark with the USPTO is determined by both the application
and the mark. A proper specimen is a vital part of the application. Many trademark
refusals can be avoided or overcome by using Not Just Patents ® Trademark Services.
Call us and ask for examples of how we can help at 1-
TMEP 904 Specimens
from Trademark Manual of Examining Procedure (TMEP) April 2013
[New sections]
TMEP 904.01 Number of Specimens
TMEP 904.01(a) More than One Item Specified in a Class
TMEP 904.01(b) In Combined or Multiple-
TMEP 904.02 Physical Form of Specimens
TMEP 904.02(a) Electronically Filed Specimens
TMEP 904.02(b) Paper-
TMEP 904.02(c) Additional Requirements
TMEP 904.02(c)(i) Other Materials Required for Examination
TMEP 904.02(c)(ii) Specimens for Marks Comprising Color
TMEP 904.02(c)(iii) Specimens for Marks Used on Publications
TMEP 904.03 Material Appropriate as Specimens for Trademarks
TMEP 904.03(a) Labels and Tags
TMEP 904.03(c) Commercial Packaging
TMEP 904.03(d) Electronic and Digital Media Attachments to Paper Filings
TMEP 904.03(e) Specimens for Trademarks Identifying Computer Programs, Movies, or Video Tapes
TMEP 904.03(f) Specimens for Sound Marks
TMEP 904.03(g) Displays Associated with Goods
TMEP 904.03(i) Electronic Displays
TMEP 904.03(i)(A) Picture or Description of the Goods
TMEP 904.03(i)(B) Show the Mark in Association with the Goods
TMEP 904.03(i)(B)(1) Prominence of Mark
TMEP 904.03(i)(B)(2) Placement of Mark and Proximity to the Goods
TMEP 904.03(i)(C) Ordering Information
TMEP 904.03(i)(C)(1) “Shopping Cart” and “Shopping Bag” Buttons and Links
TMEP 904.03(i)(C)(2) Telephone Numbers and E-
TMEP 904.03(i)(C)(3) “Contact Us,” “Customize,” or “Configure” Buttons and Links
TMEP 904.03(i)(D) Beta Websites
TMEP 904.03(k) Specimens for Marks that are Impracticable to Place on Goods, Packaging, or Displays
TMEP 904.03(l) Specimens for Motion Marks
TMEP 904.03(m) Specimens for Scent and Flavor Marks
TMEP 904.04 Material Not Appropriate asTMEP 904 Specimens
TMEP 904.01 Number of Specimens
TMEP 904.01(a) More than One Item Specified in a Class
TMEP 904.01(b) In Combined or Multiple-
TMEP 904.02 Physical Form of Specimens
TMEP 904.02(a) Electronically Filed Specimens
TMEP 904.02(b) Paper-
TMEP 904.02(c) Additional Requirements
TMEP 904.02(c)(i) Other Materials Required for Examination
TMEP 904.02(c)(ii) Specimens for Marks Comprising Color
TMEP 904.02(c)(iii) Specimens for Marks Used on Publications
TMEP 904.03 Material Appropriate as Specimens for Trademarks
TMEP 904.03(a) Labels and Tags
TMEP 904.03(c) Commercial Packaging
TMEP 904.03(d) Electronic and Digital Media Attachments to Paper Filings
TMEP 904.03(f) Specimens for Sound Marks
TMEP 904.03(g) Displays Associated with Goods
TMEP 904.04(a) Drawing or “Picture” of the Mark
TMEP 904.04(b) Advertising Material
TMEP 904.04(c) Package Inserts
TMEP 904.05 Affidavit Supporting Substitute Specimens
TMEP 904.06 Translation of Matter on Specimens
TMEP 904.07 Requirements for Substitute Specimens and Statutory Refusals
TMEP 904.07(a) Whether the Specimen Shows the Mark Used in Commerce
TMEP 904.07(b) Whether the Specimen Shows the Applied-
Specimens are required because they show the manner in which the mark is seen by the public. Specimens also provide supporting evidence of facts recited in the application.
An application for registration under §1(a) of the Trademark Act must include one specimen for each class, showing use of the mark on or in connection with the goods, or in the sale or advertising of the services, in commerce. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv) and 2.56(a). If an application under §1(a) is filed without a specimen, the examining attorney must issue an Office action requiring the applicant to submit one specimen for each class, with an affidavit or declaration under 37 C.F.R. §2.20 stating that the specimen was in use in commerce on the filing date of the application. The Office action must also indicate that, pending submission of an acceptable specimen, registration is refused because the applicant has not provided evidence of use of the mark in commerce. 15 U.S.C. §§1051(a)(1) and 1127; 37 C.F.R. §§2.34(a)(1)(iv) and 2.56(a).
In an application for registration under §1(b) of the Trademark Act, no specimen is required at the time the application is filed. However, before a registration will issue, the applicant must file an allegation of use that includes one specimen for each class, showing use of the mark in commerce on or in connection with the goods or in the sale or advertising of the services. 37 C.F.R. §§2.56(a), 2.76(b)(2), and 2.88(b)(2).
No specimen showing use of the mark is required in an application based solely on §44 or §66(a) of the Trademark Act, 15 U.S.C. §1126 or §1141f(a). While a §44 or §66(a) applicant must assert a bona fide intent to use the mark in commerce, the applicant is not required to assert actual use in commerce prior to registration. Crocker National Bank v. Canadian Imperial Bank of Commerce, 223 USPQ 909 (TTAB 1984); TMEP §§1009 and 1904.01(d).
If the nature of a specimen is unclear, the applicant must explain what it is and how it is used.
A copy or reproduction of the drawing is not an acceptable specimen. 37 C.F.R. §2.56(c).
Specimens of value should not be filed.
Interested parties, including potential opposers, may view and print images of the specimens in an application or registration file through the Trademark Document Retrieval ("TDR") portal on the USPTO website at http://www.uspto.gov. The USPTO does not permit specimens to be removed from the record. Furthermore, once filed, specimens remain part of the record and will not be returned to the applicant. 37 C.F.R. §2.25. This ensures that there is a complete record of the submissions made by the applicant. See notice at 64 Fed. Reg. 48900, 48901 (Sept. 8, 1999) and 1226 TMOG 103 (Sept. 28, 1999). See also TMEP §404.
TMEP 904.01 Number of Specimens
One specimen for each class is required in an application for registration under
§1(a) of the Trademark Act, or in an allegation of use in an application under §1(b).
If a single specimen supports multiple classes, the applicant should indicate which
classes are supported by the specimen. The examining attorney need not require multiple
copies of the specimen. The examining attorney should make a note in the “Notes-
TMEP 904.01(a) More than One Item Specified in a Class
Generally, if more than one item of goods, or more than one service, is specified in one class in an application, it is usually not necessary to have a specimen for each product or service. When the range of items is wide or contains unrelated articles, the examining attorney may request additional specimen(s) under 37 C.F.R. §2.61(b).
If the goods are a "full line of pharmaceuticals," however, the examining attorney must require the applicant to provide evidence that it uses the mark in connection with pharmaceuticals to treat diseases or health problems in all categories in the World Health Organization ("WHO") International Statistical Classification of Diseases and Related Health Problems.
See TMEP §1402.03 regarding broad identifications, TMEP §1402.03(b) regarding house marks, and TMEP §1402.03(c) regarding marks for “a full line of” a genre of products.
TMEP 904.01(b) In Combined or Multiple-
A combined (or multiple-
See TMEP §§1403 et seq. regarding examination of multiple-
TMEP 904.02 Physical Form of Specimens
TMEP 904.02(a) Electronically Filed Specimens
In an electronically filed application, allegation of use, affidavit of use under 15 U.S.C. §1058 or §1141k of the Trademark Act (“§8 affidavit” or “§71 affidavit”), or response to an Office action, the specimen(s) must be in .jpg or .pdf format. 37 C.F.R. §§2.56(d)(4) and 2.161(g)(3). If the nature of the specimen is unclear, the applicant should explain what it is and how it is used. See TMEP §904.03(d) regarding electronic and digital media attachments and §904.03(f) regarding specimens for sound marks.
Sometimes, no visible specimen is in the record due to a technical problem during
submission of the application. In this situation, the examining attorney should first
send an e-
The Office prefers that the specimen, whether a true copy of the original or a substitute, be submitted electronically via the Trademark Electronic Application System (“TEAS”). In TEAS, the Response to Office Action form can be accessed by clicking on the link entitled “Response Forms” at http://www.uspto.gov.
TMEP 904.02(b) Paper-
In a paper-
When the applicant cannot supply an actual specimen meeting these size requirements due to the nature or manner of use of the mark, the application, allegation of use, affidavit of use, or response must include a facsimile, such as a photograph, photocopy, or other acceptable reproduction, that is a suitable size and clearly shows how the mark is used on or in connection with the goods or in the sale or advertising of the services.
Facsimiles should show the whole article to which the mark is applied, or enough of the article so that the nature of the article can be identified. The mark and all other pertinent written matter on the article should be clear and legible. For example, product photographs appearing on folders or brochures that show the trademark on the goods are acceptable facsimiles. It is permissible to show the complete article in one photograph and the written matter in another, so that the written matter will be legible, or to show different views of an article either in a single photograph or in separate photographs.
A copy or reproduction of the drawing is not an acceptable specimen or facsimile. 37 C.F.R. §2.56(c).
If color is a feature of the mark, the applicant should submit facsimiles made by color photography, or by any process that reproduces in color. See TMEP §904.02(c)(ii).
If an applicant does submit a specimen that exceeds the size requirements (a “bulky specimen”), the USPTO will create a facsimile of the specimen that meets the size requirements of the rule and destroy the original specimen. 37 C.F.R. §2.56(d)(2). If the copy of the specimen created by the USPTO does not adequately depict the mark, the examining attorney will require a substitute specimen that meets the size requirements of the rule and an affidavit or declaration verifying the use of the substitute specimen. See TMEP §904.05 regarding affidavits supporting substitute specimens.
If necessary, the examining attorney may require one actual specimen for examination purposes, under 37 C.F.R. §2.61(b). RETURN TO TOP
TMEP 904.02(c) Additional Requirements
TMEP 904.02(c)(i) Other Materials Required for Examination
During examination, an examining attorney also has the discretion to request additional materials, under 37 C.F.R. §2.61(b), if necessary for proper examination of the mark. TMEP §814. For example, if the mark is a configuration of the goods or of the container for the goods, the examining attorney may require one actual product or container. Or the examining attorney might require a complete copy of a publication in order to determine whether a mark is merely descriptive of the goods. See TMEP §904.02(c)(iii) regarding marks used on publications.
In specific cases, such as when an applicant submits additional materials in response to a requirement made by the examining attorney, and the materials do not meet the size parameters identified above, the USPTO may create facsimiles of these materials to be entered into the record and destroy the originals. However, the examining attorney should encourage the applicant to submit a photograph of the specimen(s) or evidence for the record.
TMEP 904.02(c)(ii) Specimens for Marks Comprising Color
If color is a feature of the mark, or if the mark consists solely of color, the specimen must show use of the color. 37 C.F.R. §2.51; TMEP §807.12. Note: In an application filed on or after November 2, 2003, if an applicant submits a color drawing, or a description of the mark that indicates the use of color on the mark, the applicant must claim color as a feature of the mark. 37 C.F.R. §2.52(b)(1); TMEP §807.07(a)(i).
If the applicant submits a specimen that is not in color or not in the appropriate color, the examining attorney will require the applicant to file a substitute specimen that shows use of the appropriate color(s). See TMEP §904.05 regarding substitute specimens.
See also TMEP §1202.05(f) regarding specimens showing use of marks that consist solely of color.
TMEP 904.02(c)(iii) Specimens for Marks Used on Publications
An application for registration of a mark for publications is treated the same as any other application with respect to specimen requirements. The USPTO does not require a complete copy of the publication or a title page in every case. However, the examining attorney may require a copy of the publication under 37 C.F.R. §2.61(b) if he or she believes it is necessary for proper examination. For example, a copy of the publication might be necessary to determine whether a mark is merely descriptive of the goods.
TMEP 904.03 Material Appropriate as Specimens for Trademarks
For a trademark application under §1(a), allegation of use in an application under §1(b), or affidavit of use under §8 or §71 of the Trademark Act, the specimen must show the mark as used on or in connection with the goods in commerce. A trademark specimen should be a label, tag, or container for the goods, or a display associated with the goods. 37 C.F.R. §2.56(b)(1). A photocopy or other reproduction of a specimen of the mark as actually used on or in connection with the goods is acceptable. 37 C.F.R. §2.56(c).
See TMEP §§1301.04 et seq. regarding service mark specimens, TMEP §1304.08(e) regarding collective membership mark specimens, TMEP §1303.02(b) regarding collective mark specimens, and TMEP §1306.06(b) regarding certification mark specimens.
TMEP 904.03(a) Labels and Tags
In most cases, where the trademark is applied to the goods or the containers for the goods by means of labels, a label is an acceptable specimen.
Shipping or mailing labels may be accepted if they are affixed to the goods or to the containers for the goods and if proper trademark usage is shown. Electronic Communications, Inc. v. Electronic Components for Industry Co., 443 F.2d 487, 170 USPQ 118 (8th Cir. 1971), cert. denied 404 U.S. 833 (1971); In re A.S. Beck Shoe Corp., 161 USPQ 168 (TTAB 1969). They are not acceptable if the mark as shown is merely used as a trade name and not as a trademark. An example of this is the use of the term solely as a return address. In re Supply Guys, Inc., 86 USPQ2d 1488 (TTAB 2008); Bookbinder’s Sea Food House, Inc. v. Bookbinder’s Restaurant, Inc., 118 USPQ 318 (Comm’r Pats. 1958); I. & B. Cohen Bomzon & Co., Inc. v. Biltmore Industries, Inc., 22 USPQ 257 (Comm’r Pats. 1934). See TMEP §1202.01 regarding trade name refusals.
In connection with labels whose appearance suggests that they are only for temporary use, the examining attorney may consider it necessary to make further inquiry as to how the specimen is used, under 37 C.F.R. §2.61(b), in order to properly examine the application. A response to the inquiry may include an additional specimen(s) if labels of a more permanent nature have by that time been adopted. However, nothing prohibits the registration of a mark in an application that contains only “temporary” specimens, provided that the specimens were actually used in commerce. See In re Chica, 84 USPQ2d 1845 (TTAB 2007) (specimen deemed unacceptable not because it was temporary but because it comprised a mere drawing of the goods with an illustration of how the mark may be displayed and not an actual specimen that applicant used in commerce).
Stamping a trademark on the goods, on the container, or on tags or labels attached to the goods or containers, is a proper method of trademark affixation. See In re Crucible Steel Co. of America, 150 USPQ 757 (TTAB 1966). The trademark may be imprinted in the body of the goods, as with metal stamping; it may be applied by a rubber stamp; or it may be inked on by using a stencil or template.
When a trademark is used in this manner, photographs or facsimiles showing the actual stamping or stenciling are acceptable as specimens.
When the specimen consists of a stamp on paper, the applicant must explain the nature of the specimen and how it is used.
TMEP 904.03(c) Commercial Packaging
The terminology “applied to the containers for the goods” means applied to any type of commercial packaging that is normal for the particular goods as they move in trade. Thus, a showing of the trademark on the normal commercial package for the particular goods is an acceptable specimen. For example, gasoline pumps are normal containers or “packaging” for gasoline.
A specimen showing use of the trademark on a vehicle in which the goods are marketed to the relevant purchasers may constitute use of the mark on a container for the goods, if this is the normal mode of use of a mark for the particular goods. In re E.A. Miller & Sons Packing Co., Inc., 225 USPQ 592 (TTAB 1985). But see In re Lyndale Farm, 186 F.2d 723, 88 USPQ 377 (C.C.P.A. 1951).
TMEP 904.03(d) Electronic and Digital Media Attachments to Paper Filings
In the absence of alternative specimens, the USPTO will accept specimens consisting of compact discs (“CDs”), digital video discs (“DVDs”), videotapes, and audiotapes. See 37 C.F.R. §2.56(d)(3). Equipment for viewing or listening to these materials is available in the USPTO.
Compact discs, DVDs, audiotapes, and videotapes may contain files in .jpg, .pdf,
.wav, .wmv, .wma, .mp3, .mpg, or .avi format. The USPTO is unable to review files
in any other format. The USPTO prefers that the applicant submit small files of less
than two minutes in duration. Only one specimen should be included on each tape or
disc; however, in a multiple-
This section pertains only to CDs, DVDs, audiotapes, and videotapes attached to paper filings. Attachments to TEAS filings must be in .jpg or .pdf format. See 37 C.F.R. §2.56(d)(4); TMEP §904.02(a).
See TMEP §904.03(f) regarding specimens for sound marks, and TMEP §904.03(l) regarding specimens for motion marks. See also 37 C.F.R. §§2.56(d)(1) and (2) and TMEP §904.02(b) regarding the size requirements for specimens attached to paper filings, and the procedures for handling specimens that exceed these requirements.
TMEP 904.03(e) Specimens for Trademarks Identifying Computer Programs, Movies, and Videos, or Audio Recordings
TThe computer program, video, and movie industries have adopted the practice of applying trademarks that are visible only when the goods, that is, programs or movies, are displayed on a screen (e.g., on the first several frames of a movie).
An acceptable specimen might be a photograph or printout of a display screen projecting the identifying trademark of a computer program, or a photograph of a frame(s) of a movie or video bearing the mark. It is not necessary that purchasers see the mark prior to purchasing the goods, as long as the mark is applied to the goods or their containers, or to a display associated with the goods, and the goods are sold or transported in commerce. In re Brown Jordan Co., 219 USPQ 375 (TTAB 1983) (holding that stamping the mark after purchase of the goods, on a tag attached to the goods that are later transported in commerce, is sufficient use).
For downloadable computer software, an applicant may submit a specimen that shows use of the mark on an Internet website. Such a specimen is acceptable only if it creates an association between the mark and software and provides sufficient information to enable the user to download or purchase the software from the website. See In re Azteca Systems, Inc., 102 USPQ2d 1955 (TTAB 2012). If the website simply advertises the software without providing a way to download, purchase, or order it, the specimen is unacceptable. See In re Dell Inc., 71 USPQ2d 1725, 1727 (TTAB 2004); see also In re Osterberg, 83 USPQ2d 1220, 1224 (TTAB 2007). See TMEP §904.03(i) regarding electronic displays as specimens for trademarks.
Similarly, a specimen for audio recordings in Class 9 that shows use of the mark
on an internet website must include a “download” or similar link to put the consumer
on notice that the identified goods are available for download. Absent such a link
or the equivalent thereof, the specimen on its face fails to show use of the mark
in commerce for the goods. In re Rogowski, 104 USPQ2d 2012, 2014-
Specimens for software may also indicate that the software is a “beta” version. This term is commonly used in the software field to identify a preliminary version of a product. Although some beta products may not be made available to consumers, others are. Thus, the appearance of this term on a specimen for software does not, by itself, necessarily mean that the relevant goods are not in actual use in commerce or that the specimen is unacceptable. If it is not clear whether the beta version is in actual use in commerce, the examining attorney should issue an information request under 37 C.F.R. §2.61(b), asking whether the version is in use in commerce. See TMEP §1301.03(a) regarding service mark specimens containing the term “beta.”
TMEP 904.03(f) Specimens for Sound Marks
To show that a sound mark actually identifies and distinguishes the goods/services and indicates their source, an applicant must submit a specimen that contains a sufficient portion of the audio or video content to show how the mark is used on or in connection with the goods/services.
For paper filings, specimens for sound marks must be submitted on CDs, DVDs, videotapes,
or audiotapes. 37 C.F.R. §2.56(d)(3). See TMEP §904.03(d). For TEAS applications
under §1(a), the specimen can be attached to the application and must be an electronic
file in .wav, .wmv, .wma, .mp3, .mpg, or .avi format. Audio files should not exceed
5 MB in size, and video files should not exceed 30 MB, because TEAS cannot accommodate
larger files. To submit an electronic file in connection with any other TEAS form
(e.g., Response to Office Action or Statement of Use/Amendment to Allege Use), the
file must be sent after the TEAS document is transmitted, as an attachment to an
e-
See TMEP §904.02(a) regarding specimens filed electronically. See also TMEP §§807.09 and 1202.15 regarding sound marks.
TMEP 904.03(g) Displays Associated with Goods
A display must be associated directly with the goods offered for sale. It must bear the trademark prominently. However, it is not necessary that the display be in close proximity to the goods. See In re Marriott Corp., 459 F.2d 525, 173 USPQ 799 (C.C.P.A. 1972); Lands’ End Inc. v. Manbeck, 797 F. Supp. 511, 24 USPQ2d 1314 (E.D. Va. 1992).
Displays associated with the goods essentially comprise point-
These items must be designed to catch the attention of purchasers and prospective purchasers as an inducement to make a sale. Further, the display must prominently display the trademark in question and associate it with, or relate it to, the goods. In re Osterberg, 83 USPQ2d 1220 (TTAB 2007); In re Morganroth, 208 USPQ 284 (TTAB 1980) (purported mark was so obfuscated on the specimen that it was not likely to make any impression on the reader). The display must be related to the sale of the goods such that an association of the two is inevitable. See In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979), and cases cited therein. See also In re ITT Rayonier Inc., 208 USPQ 86 (TTAB 1980). Cf. In re Shipley Co. Inc., 230 USPQ 691 (TTAB 1986); In re Jones, 216 USPQ 328 (TTAB 1982).
Folders, brochures, or other materials that describe goods and their characteristics
or serve as advertising literature are not per se “displays.” In re Schiapparelli
Searle, 26 USPQ2d 1520 (TTAB 1993); In re Drilco Industrial Inc., 15 USPQ2d 1671
(TTAB 1990). In order to rely on such materials as specimens, an applicant must
submit evidence of point-
An infomercial was held to be a display associated with the goods, where the goods were shown either immediately before or immediately after the trademark was displayed, and the information on how to order the goods was given within a reasonable time after the goods were shown. The Board found that the infomercial created an association between the trademark and the goods, and the test for constituting a display associated with the goods was, therefore, satisfied. In re Hydron Techs., Inc., 51 USPQ2d 1531 (TTAB 1999).
Displays associated with the goods also exist in an electronic or online environment in the form of web pages. These “electronic displays” perform the same function as traditional displays and must meet the same standards for an acceptable specimen as traditional displays. See In re Sones, 590 F.3d 1282, 1288, 93 USPQ2d 1118, 1123 (Fed. Cir. 2009); In re Dell Inc., 71 USPQ2d 1725, 1727 (TTAB 2004). See TMEP §904.03(i) regarding electronic displays.
In appropriate cases, catalogs are acceptable specimens of trademark use. See Lands’ End Inc. v. Manbeck, 797 F. Supp. 511, 24 USPQ2d 1314 (E.D. Va. 1992). In that case, the applicant had applied to register “KETCH” for purses. The specimen was a catalog page that included a picture of the goods and, below the picture, the mark and a description of the goods. The Court stated, “The alleged trademark ‘KETCH’ appears prominently in large bold lettering on the display of purses in the Lands’ End specimen in a manner which closely associates the term with the purses.” 24 USPQ2d at 1315.
The Court determined that the catalog was not mere advertising and that it met the relevant criteria for displays associated with the goods. The Court evaluated the catalog specimen as follows:
A customer can identify a listing and make a decision to purchase by filling out the sales form and sending it in or by calling in a purchase by phone. A customer can easily associate the product with the word “KETCH” in the display.... The point of sale nature of this display, when combined with the prominent display of the alleged mark with the product, leads this court to conclude that this mark constitutes a display associated with the goods.
24 USPQ2d at 1316.
Accordingly, examining attorneys may accept any catalog or similar specimen as a
display associated with the goods, provided that it: (1) includes a picture or
a sufficient textual description of the relevant goods; (2) shows the mark in association
with the goods; and (3) includes the information necessary to order the goods (e.g.,
an order form or a phone number, mailing address, or e-
However, the mere inclusion of a phone number, Internet address, and/or mailing address on an advertisement describing the product is not in itself sufficient to meet the criteria for a display associated with the goods. There must be an offer to accept orders or instructions on how to place an order. In re MediaShare Corp., 43 USPQ2d 1304 (TTAB 1997) (fact sheet brochures held not to qualify as a catalog under Lands’ End, where the specimen included no information as to how to order the goods). It is not necessary that the specimen list the price of the goods.
TMEP 904.03(i) Electronic Displays
A web page that displays a product can constitute a “display associated with the goods” if it:
(1) contains a picture or textual description of the identified goods;
(2) shows the mark in association with the goods; and
(3) provides a means for ordering the identified goods.
See In re Sones, 590 F.3d 1282, 1288, 93 USPQ2d 1118, 1123 (Fed Cir. 2009); In re
Azteca Sys., Inc., 102 USPQ2d 1955, 1957-
The mark must also be displayed on the web page in a manner in which customers will
recognize it as a mark. See In re Morganroth, 208 USPQ 284, 287-
Generally, a web page will display the trademark in association with a picture of the goods. However, in Sones, the Federal Circuit held that although a visual depiction of the goods “is an important consideration in determining whether a submitted specimen sufficiently associates a mark with the source of the goods,” a picture of the goods on the web page is not mandatory. In re Sones. at 1288, 93 USPQ2d at 1123. A textual description may suffice where “the actual features or inherent characteristics of the goods are recognizable from the textual description, given that the more standard the product is, the less comprehensive the textual description need be.” Id. at 1289, 93 USPQ2d at 1124.
An applicant need not describe a web-
Description: Screenshot of department store webpage displaying bedding products.
Example 1: Mark is associated with the goods, goods are pictured and described, and ordering information is provided.
Mark: LACOSTE
Goods: Coverlets, duvet covers, duvets, bed blankets, bed linen, bed sheets, pillow cases, bath linen, washing mitts
The mark is placed below the website navigation tabs and is prominently displayed.
The mark is physically close to the goods and is repeated in the links located under each product, indicating a direct association with the goods.
No other marks appear to be used in connection with the goods apart from the alligator design and the product style names, all of which are associated with the goods.
Product information is provided in the form of pictures and descriptions of the goods along with prices.
There is a “shopping bag” at the top of the web page to enable direct ordering.
Even if the web page did not include the larger LACOSTE mark, the LACOSTE marks depicted under the photographs of the goods (e.g., Lacoste “Brighton” Comforter Set or Lacoste “Confetti” Comforter Set) would be acceptable to show trademark use for the goods.
If the proposed mark were “Macy’s” (as it appears in the upper-
Similarly, a web page from a third–party, social-
However, while a web page display associated with the goods is an acceptable specimen
for goods, mere advertising material is not. In re Anpath Grp., 95 USPQ2d 1377, 1380
(TTAB 2010); In re Quantum Foods, Inc., 94 USPQ2d 1375, 1379 (TTAB 2010); In re Osterberg,
83 USPQ2d at 1224; In re Dell Inc., 71 USPQ2d at 1727; In re MediaShare Corp., 43
USPQ2d 1304, 1307 (TTAB 1997). Acceptable web-
A point-
Therefore, a web page that merely provides information about the goods, but does not provide a means of ordering them, is viewed as promotional material, which is not acceptable to show trademark use on goods. See In re Genitope Corp., 78 USPQ2d 1819, 1822 (TTAB 2006) (“[T]he company name, address and phone number that appears at the end of the web page indicates only location information about applicant; it does not constitute a means to order goods through the mail or by telephone, in the way that a catalog sales form provides a means for one to fill out a sales form or call in a purchase by phone.”). Merely providing a link to the websites of online distributors is not sufficient. There must be a means of ordering the goods directly from the applicant’s web page, such as a telephone number for placing orders or an online ordering process. In re Quantum Foods, Inc., 94 USPQ2d at 1380; In re Osterberg, 83 USPQ2d at 1224.
When a web-
Whether a web-
See TMEP §§904.03(i)(A)–904.03(i)(C)(3) for further discussion of the various factors
for assessing whether a web-
TMEP 904.03(i)(A) Picture or Description of the Goods
In order for a display to be associated with the goods, something on the web page
must show or describe the goods for the consumer, that is, a picture or description
of the goods. See In re Sones, 590 F.3d 1282, 1288-
TMEP 904.03(i)(B) Show the Mark in Association with the Goods
A web-
Example 2: Applied-
Mark: GIS EMPOWERED BY CITYWORKS
Goods: Computer software for management of public works and utilities assets
The applied-
The following features of a specimen particularly influence the mark-
TMEP 904.03(i)(B)(1) Prominence of Mark
The more prominently an applied-
presents the mark in larger font size or different stylization or color than
the surrounding text; places the mark at the beginning of a line or sentence;
positions the mark next to a picture or description of the goods; or uses
the “TM” designation with the applied-
Compare In re Quantum Foods, Inc., 94 USPQ2d 1375, 1378 (TTAB 2010) (describing an
applied-
These factors are not dispositive, and the web page as a whole must be assessed to
determine whether the applied-
shown in the same font size, stylization, or color as the surrounding text;
buried in a sentence; or
encompassed within descriptive text such that the commercial impression of the mark is that of a descriptive term for the goods and not as a trademark.
See In re Osterberg, 83 USPQ2d at 1223.
TMEP 904.03(i)(B)(2) Placement of Mark and Proximity to the Goods
Appearance in Website and E-
Placement in a Location Typical for a Retail-
Example 3: Mark is associated with the services, but the specimen would not be acceptable as evidence of use of the mark as a trademark for the goods shown.
Mark: MACYS.COM
Services: Electronic retail department-
The web page is not acceptable as evidence of use of the mark as a trademark
for the goods shown because the mark is serving only as a service mark for retail
store services featuring the goods of others (e.g., “Cuisinart” or “Polo by Ralph
Lauren”). The mark is located in the upper-
The mark may also include wording (e.g., “market,” “store,” or “depot”) that indicates
use as a service mark. Nevertheless, a mark appearing in a location where service
marks normally appear may qualify as a trademark if the web page demonstrates an
association between the applied-
Example 4: Mark is associated with the goods, goods are pictured and described, and ordering information is provided.
Mark: HAPPY SOCKS
Goods: Clothes, namely, socks
The mark is shown prominently in the upper-
Furthermore, if a mark appears on a web page in a location where trademarks normally
are not placed, a “substantially larger and more prominent” placement of the mark
thereon could result in acceptable trademark use, when the only products on the web
page are the identified goods, the placement of the mark is such that the mark-
Example 5: Mark is associated with the goods, goods are pictured and described, and ordering information is provided.
Mark: COLE HAAN
Goods: Eyeglasses, sunglasses, cases for spectacles and sunglasses
The mark is located in the upper-
Description: Screenshot of webpage displaying bath towels.
Example 6: Mark is associated with the goods, goods are pictured and described, and ordering information is provided.
Mark: BROOKS BROTHERS
Goods: Bed sheets, dust ruffles, duvet covers, pillow cases, pillow shams, bed shams, bed spreads, towels, and wash cloths
The mark is displayed prominently in large font and placed above the pictures of the goods. No other marks appear to be used in connection with the identified goods apart from the sheep design placed near the goods, which is also associated with the goods. The web page contains pictures and descriptions of the goods, size and color selections, and price information. The web page would also be an acceptable specimen if the mark were for retail store services because the mark is located where retail service marks are typically placed and the “FIND A STORE” tab indicates the presence of physical stores, thus reinforcing service mark usage.
Displayed in or Near Corporate Contact Information. A mark that appears on a web
page only in conjunction with the corporate address, telephone number, and website
and e-
Presence of Other Marks. In some instances, the appearance of more than one mark
(whether word or design marks) on the web page may distract consumers and make it
less likely that they will perceive an association between the applied-
Example 7: Mark is associated with the goods, goods are pictured and described, and ordering information is provided.
Mark: KEEPING YOU COZY.
Goods: Jackets
The mark is placed below the website navigation tabs and is prominently displayed
in large font followed by the “TM” designation. The mark is physically close
to the goods and would be perceived to be associated with them. The web page
features product information in the form of pictures and descriptions of the goods
along with prices. The links under each product combined with the “BUY ONLINE
NOW!” instruction indicate that direct ordering is possible. If the proposed
mark were “T. Markey Your Clothing Emporium” (as it appears in the upper-
The nature of the wording and design elements of each mark on the specimen and the
appearance of the same or similar elements in the various marks may also influence
whether the applied-
Example 8: Mark is associated with the goods, goods are pictured and described, and ordering information is provided.
Mark: T.MARKEY YOUR CLOTHING EMPORIUM
Goods: Shirts
The mark is located on the top of the web page and is prominently displayed. Although the mark is placed above the website navigation tabs and appears in conjunction with a slogan that refers to retail store services (i.e., “Your Clothing Emporium”), the mark still appears to be associated with the goods because the goods are shown immediately below the navigation tabs and the identified goods are the only products displayed. Another mark appears to be used in connection with the goods (i.e., “Let T.Markey Bundle You Up.” and design). However, multiple marks may function as a source indicator for the same goods. Here, both marks contain the same term “T.Markey,” suggesting the marks indicate the same source, and both are placed near and in association with the goods. The web page provides product information in the form of pictures and descriptions of the goods, prices, and size options. The telephone number is an acceptable means of ordering, even though it is not accompanied with special ordering instructions, because there is sufficient product information to make the decision to purchase the goods and the telephone number is prominently displayed and positioned in close proximity to the product information, implying that the goods may be ordered by calling the telephone number. If the telephone number had been listed near or as part of applicant’s address, it would not be sufficient ordering information since it would be perceived as part of the corporate contact information and not as a means for purchasing the goods.
Association is more likely when the applied-
Example 9: Mark is associated with the goods, goods are pictured and described, and ordering information is provided.
Mark: TEEYAK
Goods: Sunglasses and hats
The mark appears below the website navigation tabs and is prominently displayed in large font followed by the “TM” designation. The mark is physically close to the goods and is directly associated with them. Although another mark (i.e., “T.Markey Your Clothing Emporium”) appears on the web page, it seems to function as a retail store service mark since it is located where service marks are commonly placed, there is other matter separating the mark from the goods, and there is another mark placed closer to the goods and better associated with them. Product information is provided in the form of pictures and descriptions of the goods along with prices. The links under each product combined with the “BUY ONLINE NOW!” instruction indicate that direct ordering is possible. In the absence of links and the “BUY ONLINE NOW!” instruction, the telephone number would not be acceptable ordering information because it appears to be part of corporate contact information provided to obtain information about the product or the company and not intended as a means of placing or accepting orders.
Association becomes less likely if other marks are used in connection with the goods and appear to be trademarks for those goods, as in Example 10. Description: Screenshot of webpage displaying toner cartridge.
Example 10: Applied-
Mark: LEADING EDGE TONERS:
Goods: Numerous goods including toner, toner cartridges, ink sticks, components for laser toner cartridges, and printer parts
Use of the applied-
TMEP 904.03(i)(C) Ordering Information
A point-
Indicators of the ability to buy the goods via the web page may include:
a sales order form to place an order, an online process to accept an order, such as “shopping cart” functionality, or special instructions on how to order; information on minimum quantities; indication of methods of payment ; information about shipment of the goods; and/or means of contacting the applicant to place an order.
See In re Anpath Grp., 95 USPQ2d 1377, 1381 (TTAB 2010); In re Quantum Foods, Inc., 94 USPQ2d at 1379.
Determining the sufficiency of ordering information is a nuanced analysis requiring
an examination of the web page content and layout in terms of the level of detail
provided about both the goods and the means for ordering them. The more specific
and clear the means of immediately and directly ordering the goods on the web page
(e.g., “shopping cart” or “Call 1-
Example 11: Mark is associated with the goods, goods are pictured and described, and ordering information is provided.
Mark: RING IN THE NEW YEAR WITH OUR RINGS
Goods: Rings
The mark is placed on the bottom of the web page and is followed by the “TM”
designation. The mark is close to the picture of the goods and contains the term
“RINGS” which references the goods. The “SHOP ONLINE” tab and the “SHOP” link
indicate direct ordering via the web page. Web page is also acceptable for goods
if the proposed mark were “T.Markey Jewelry” (in upper-
Conversely, the more detailed the product information is on the web page, the less
detailed the ordering information needs to be (e.g., providing a telephone number
without specifically stating that it be used to place orders). See Example 8 at TMEP
§904.03(i)(B)(2). Although pricing information is normally associated with ordering
goods, the presence or absence of pricing on its own is not determinative of whether
the web page provides sufficient ordering information. Compare In re Dell Inc., 71
USPQ2d 1725, 1728-
See TMEP §§904.03(i)(C)(1)-
TMEP 904.03(i)(C)(1) “Shopping Cart” and “Shopping Bag” Buttons and Links
Frequently used methods of ordering goods online include buttons and links identified
as “shopping cart,” “shopping bag,” “add to cart,” and “buy” that permit a consumer
to directly purchase the goods. See Example 3 at TMEP §904.03(i)(B)(2). The presence
of these features conveys the web page’s point-
“Where to buy” buttons and links are usually unacceptable since they typically provide only contact information for the retailers, wholesalers, or distributors of the goods instead of functioning as a means of directly ordering the goods, as shown in Example 12. See In re Osterberg, 83 USPQ2d 1220, 1224 (TTAB 2007) (finding a “Where to Buy” link insufficient ordering information since the record contained no information about what the link included and applicant’s explanation in the appeal brief indicated that the link provided consumers a list of distributors and their websites from whom goods may be purchased). Description: Screenshot of webpage displaying a condom box.
Example 12: Web page specimen is not acceptable because, among other things, it lacks ordering information.
Mark: CONDOMTOY CONDOM
Goods: Condoms
The web page provides no means of ordering goods. While there is a “Where to
Buy” button at the top, the record does not contain the underlying page the button
would lead consumers to. While the applicant explained in the appeal brief that the
link connects shoppers with distributors of the goods, the TTAB found this to be
insufficient because consumers were not able to immediately and directly purchase
the goods. The applied-
TMEP 904.03(i)(C)(2) Telephone Numbers and E-
In most cases, telephone numbers and e-
However, even where a web page provides sufficient product information for the consumer
to make the decision to purchase the goods, a telephone number or e-
Example 13: Web-
Mark: Design of “fingerprint man”
Goods: Biopharmaceutical preparations used to treat cancer in humans, namely, individualized cancer treatments prepared specifically for each individual patient from whom tumor tissue has been received.
The web page provides no actual means of ordering goods since it states that the study is closed to patient registration and provides a link to “click here for more information” about the product instead of to order the product, and the page to which the link leads is not of record. The company name, address, and telephone number at the bottom is only information about applicant’s location and not a means of ordering goods.
By contrast, an e-
The rare case of specialized industrial goods or similarly complex or sophisticated
goods for which technical assistance is required in selecting the product or determining
the product specifications may present a special situation as to a telephone number
showing the requisite ability to order. In such a special situation, the telephone
number would suffice if product information is available on the web page or website
and the evidentiary record adequately explains the specialized nature of the goods,
the industry practice for ordering them, and the need to consult with sales staff
over the telephone to place customized orders. In the case In re Valenite Inc., the
Board found a web page containing a link to an online catalog, along with a toll-
TMEP 904.03(i)(C)(3) “Contact Us,” “Customize,” or “Configure” Buttons and Links
“Contact Us” buttons and links usually are not acceptable because they generally
do not enable direct ordering of the goods. These buttons and links typically route
consumers to a different web page that offers only an invitation to obtain more information
about the goods, or about the retailers, wholesalers, or distributors who actually
sell the goods, as shown in Example 14. See, e.g., In re Quantum Foods, Inc., 94
USPQ2d 1375, 1379 (TTAB 2010) (noting that the “contact us” link on applicant’s web-
Example 14: Web-
Mark: PROVIDING PROTEIN AND MENU SOLUTIONS
Goods: Processed meats, beef, pork, poultry and seafood sold in portions; fully cooked entrees consisting primarily of meat, beef, pork, poultry or seafood
The web page provides no means of ordering goods (e.g., no sales form, pricing,
offers to accept orders, special instructions for ordering, or opportunity and means
to order online) and the minimal product information makes it unclear what the goods
are. The TTAB found insufficient applicant’s claims that placing the cursor over
“FOODSERVICE” reveals a drop-
By analogy, a seller’s contact information that often appears in advertisements does not provide a sufficient means of ordering, in contrast to a telephone number on a sales form designated to accept orders. In re Genitope Corp., 78 USPQ2d at 1822.
Similarly, “Customize” and “Configure” buttons and links that allow customers to configure the goods generally are insufficient by themselves, since such features only enable personalization and not necessarily purchase of the goods. For these buttons and links to be deemed adequate means of ordering, the record must contain evidence that they permit customers to actually buy the goods. See In re Dell Inc., 71 USPQ2d 1725, 1727 (TTAB 2004) (finding that a “Customize It” link was sufficient ordering means when the information on the website clearly indicated that the goods could be bought online via the link).
TMEP 904.03(i)(D) Beta Websites
In some cases a specimen may consist of an excerpt from a website labeled as “beta.” This term is commonly used to describe a preliminary version of a product or service. Although some beta websites may not be accessible to consumers, others are. Thus, the use of this term in connection with an apparently functioning website shown in a specimen does not, by itself, necessarily mean that the relevant goods or services shown on the website are not in actual use in commerce or that the specimen is unacceptable. If it is not clear whether the beta version is in actual use in commerce, the examining attorney should issue a requirement for information under 37 C.F.R. §2.61(b), asking whether the version is in use in commerce. See TMEP §1301.03(a) regarding service mark specimens containing the term “beta.”
If printed matter included with the goods functions as a part of the goods, such as a manual that is part of a kit for assembling the product, then placement of the mark on that printed matter does show use on the goods. In re Ultraflight Inc., 221 USPQ 903, 906 (TTAB 1984) (“We believe the instruction manual is as much a part of applicant’s goods as are the various parts that are used to build the gliders. Application of the mark to the manual of assembly instructions, then, must be considered affixation to the goods.”).
TMEP 904.03(k) Specimens for Marks that are Impracticable to Place on Goods, Packaging, or Displays
The USPTO may accept another document related to the goods or the sale of the goods when it is impracticable to place the mark on the goods, packaging, or displays associated with the goods. 15 U.S.C. §1127 (definition of “use in commerce”); 37 C.F.R. §2.56(b)(1). This provision is not intended as a general alternative to submitting labels, tags, containers, or displays associated with the goods; it applies only to situations when the nature of the goods makes use on these items impracticable. For example, in rare circumstances it may be impracticable to place the mark on the goods or packaging for the goods if the goods are natural gas, grain that is sold in bulk, or chemicals that are transported only in tanker cars. In such instances, an acceptable specimen might be an invoice, a bill of lading, or a shipping document that shows the mark for the goods.
A mere assertion of impracticability does not suffice to establish that traditional
trademark use is impracticable. Rather, the record must indicate that the goods are,
in fact, of such a nature. In In re Settec, Inc., 80 USPQ2d 1185 (TTAB 2006), the
applicant asserted that placing the mark on the goods or on displays associated with
the goods in the traditional manner was impracticable because the purpose of the
goods was to provide digital media copy protection to media content providers, and
placing the mark on the final product available to the ultimate end-
TMEP 904.03(l) Specimens for Motion Marks
To show that a motion mark actually identifies and distinguishes the goods/services and indicates their source, an applicant must submit a specimen that depicts the motion sufficiently to show how the mark is used on or in connection with the goods/services, and that matches the required description of the mark. Although the drawing for a motion mark may depict a single point in the movement, or up to five freeze frames showing various points in the movement, an acceptable specimen should show the entire repetitive motion in order to depict the commercial impression conveyed by the mark (e.g., a video clip, a series of still photos, or a series of screen shots).
For TEAS applications under §1(a) in which the specimen is an electronic file in
.wav, .wmv, .wma, .mp3, .mpg, or .avi format, the electronic file can be attached
to the application, but should not exceed 5 MB for audio files and 30 MB for video
files because TEAS cannot accommodate larger files. To submit an electronic file
in connection with any other TEAS form (e.g., Response to Office Action or Statement
of Use/Amendment to Allege Use), the file must be sent after the TEAS document is
transmitted, as an attachment to an e-
TMEP 904.03(m) Specimens for Scent and Flavor Marks
To show that the specimen for a scent or flavor mark actually identifies and distinguishes the goods and indicates their source, an applicant must submit a specimen that contains the scent or flavor and that matches the required description of the scent or flavor. In most cases, the specimen will consist of the actual goods themselves because the examining attorney must be able to smell or taste the scent or flavor in order to determine whether the specimen shows use of the mark in connection with the goods. When submitting such a specimen, the applicant should clearly indicate on the specimen itself that it is a specimen for a scent or flavor mark application so that the USPTO will properly route the actual specimen to the examining attorney.
A “scratch and sniff” sticker for a scent mark is an acceptable specimen, provided that it is part of the packaging for the goods or is used in such a manner as to identify the goods and indicate their source.
See also TMEP §§807.09 and 1202.13 regarding scent and flavor marks.
TMEP 904.04 Material Not Appropriate as Specimens for Trademarks
TMEP 904.04(a) Drawing or “Picture” of the Mark
A photocopy of the drawing required by 37 C.F.R. §2.51 is not a proper specimen. 37 C.F.R. §2.56(c). Similarly, the specimen may not be a “picture” of the mark, such as an artist’s drawing or a printer’s proof that merely illustrates what the mark looks like and is not actually used on or in connection with the goods in commerce. See In re Chica, 84 USPQ2d 1845 (TTAB 2007) (specimen deemed unacceptable because it comprised a mere drawing of the goods with an illustration of how the mark may be displayed and not an actual specimen that applicant used in commerce).
TMEP 904.04(b) Advertising Material
Advertising material is generally not acceptable as a specimen for goods. Any material whose function is merely to tell the prospective purchaser about the goods, or to promote the sale of the goods, is unacceptable to support trademark use. Similarly, informational inserts are generally not acceptable to show trademark use. In re MediaShare Corp., 43 USPQ2d 1304 (TTAB 1997); In re Schiapparelli Searle, 26 USPQ2d 1520 (TTAB 1993); In re Drilco Industrial Inc., 15 USPQ2d 1671 (TTAB 1990); In re ITT Rayonier Inc., 208 USPQ 86 (TTAB 1980); In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979). However, an instruction sheet may be an acceptable specimen. In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984). See TMEP §904.03(j) regarding manuals and TMEP §904.04(c) regarding package inserts.
The following types of items are generally considered advertising, and unless they
comprise point-
As to display of trademarks on company uniforms, see In re McDonald’s Corp., 199 USPQ 702 (TTAB 1978); Toro Mfg. Corp. v. John B. Stetson Co., 161 USPQ 749 (TTAB 1969).
Bags and other packaging materials bearing the name of a retail store and used by the store merely for packaging items of sold merchandise are not acceptable to show trademark use of the store name for the products sold by the store (e.g., bags at cash register). When used in this manner, the name merely identifies the store. See In re The Pennsylvania Fashion Factory, Inc., 198 USPQ 568 (TTAB 1978), aff’d, 588 F.2d 1343, 200 USPQ 140 (C.C.P.A. 1978).
TMEP 904.04(c) Package Inserts
If material inserted in a package with the goods is merely advertising material, then it is not acceptable as a specimen of use on or in connection with the goods. Material that is only advertising does not necessarily cease to be advertising because it is placed inside a package.
Package inserts such as invoices, announcements, order forms, bills of lading, leaflets, brochures, printed advertising material, circulars, press releases, and the like are not acceptable specimens to show use on goods. See In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979).
TMEP 904.05 Affidavit Supporting Substitute Specimens
If the specimen is unacceptable, the examining attorney will require a substitute
specimen. Generally, when submitting a substitute specimen, the applicant must include
an affidavit or declaration under 37 C.F.R. §2.20 verifying that the substitute specimen
is in use in commerce. Similarly, when submitting an additional specimen in support
of a multiple-
In an application under §1(a) of the Trademark Act, the affidavit or declaration must state that the substitute or additional specimen was in use in commerce at least as early as the application filing date. 37 C.F.R. §2.59(a). If the applicant cannot provide an acceptable substitute specimen, supported by an affidavit or declaration of use in commerce as of the filing date of the application, the applicant may amend the basis to §1(b). See TMEP §§806.03 et seq. regarding amendments to the basis.
In an application under §1(b) of the Act, an applicant who files a substitute or additional specimen after an amendment to allege use under §1(c) of the Act must include an affidavit or declaration stating that applicant used the substitute or additional specimen in commerce on or in connection with the goods/services prior to filing the amendment to allege use. 37 C.F.R. §2.59(b)(1). An applicant who files a substitute specimen after a statement of use under §1(d) of the Act must verify that the substitute or additional specimen was in use in commerce before the expiration of the deadline for filing a statement of use (i.e., within six months of the issuance date of the notice of allowance or before the expiration of an extension of time for filing a statement of use). 37 C.F.R. §2.59(b)(2).
If the dates of use change as the result of the submission of new specimen(s), the applicant must file an amendment of the dates of use, supported by an affidavit or declaration under 37 C.F.R. §2.20. See 37 C.F.R. §2.71(c); TMEP §903.04.
In some situations, however, an affidavit or declaration of use of substitute specimens is not necessary. For instance, if the specimen originally filed is cut from a larger object, it is not necessary to provide an affidavit or declaration when a sample (or a photograph) of the complete object is submitted to corroborate the original specimen. In these circumstances, the additional specimen is supplemental, and the examining attorney may consider the original specimens to have been satisfactory.
TMEP 904.06 Translation of Matter on Specimens
If there is matter printed on a specimen that is not in English, the examining attorney may require that the applicant submit a translation of this matter to permit proper examination. 37 C.F.R. §2.61(b). If the examining attorney determines that a translation is necessary, he or she should limit the requirement in an appropriate manner to avoid placing an unnecessary burden on the applicant.
TMEP 904.07 Requirements for Substitute Specimens and Statutory Refusals
TMEP 904.07(a) Whether the Specimen Shows the Mark Used in Commerce
An application for registration under §1(a) of the Trademark Act or an allegation
of use in an application under §1(b) of the Act must include one specimen per class
showing use of the mark as used on or in connection with the goods, or in the sale
or advertising of the services in commerce. 15 U.S.C. §§1051(a)(1), 1051(c) and
1051(d)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), 2.76(b) and 2.88(b). Initially,
the examining attorney must review the specimen to determine whether: (1) the applied-
The following non-
No specimen is submitted;
The applied-
The specimen does not show use of the applied-
The specimen is not in “use in commerce” (e.g., a printer’s proof of an advertisement for services);
The specimen is altered/mutilated/unprintable or illegible;
The specimen is merely advertising material for goods;
The specimen is merely a picture or drawing of the mark;
The specimen is a photocopy of the drawing;
The specimen is an electronic display associated with the goods (e.g., an online catalog, or web page display for goods), and fails to include ordering information or pricing;
The specimen is a non-
In an Office action addressing such specimen issues, the examining attorney must
require a substitute specimen and, if necessary, a supporting affidavit or declaration
under 37 C.F.R. §2.20. The Office action must also indicate that pending a proper
response to the requirement, registration is refused because applicant has not provided
evidence of use of the applied-
If the applicant responds by submitting a substitute specimen, and unlike in the original specimen, the mark on the substitute specimen now does not agree with the mark on the drawing (see TMEP §807.12), but the specimen would otherwise be acceptable to show use in connection with the goods/services, the examining attorney may allow the applicant to amend the drawing if such an amendment would not constitute a material alteration of the mark. If any remaining issues can be handled by examiner’s amendment, and the mark is a standard character mark, the examining attorney may give the applicant the option to amend the drawing by examiner’s amendment. If not, the examining attorney should issue a final refusal that also gives the applicant the option to overcome the refusal by submitting a substitute drawing.
If an amendment of the drawing would be a material alteration, the examining attorney
must issue a final refusal (assuming the application is otherwise in condition for
final refusal) because the substitute specimen does not present a new issue. The
underlying basis for refusal, i.e., that the applicant has not provided evidence
of use of the applied-
TMEP 904.07(b) Whether the Specimen Shows the Applied-
The examining attorney must also evaluate the specimen to determine whether the applied-
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If the deficiency in a specimen amounts to failure to demonstrate use of the subject
matter as a trademark and/or service mark, the examining attorney must issue a refusal
of registration on the ground that the subject matter does not function as a mark,
in addition to requiring a substitute specimen. The statutory basis for refusal
is 15 U.S.C. §§1051, 1052, and 1127 for trademarks, or 15 U.S.C. §§1051, 1052, 1053,
and 1127 for service marks. See In re Osmotica Holdings Corp., 95 USPQ2d 1666 (TTAB
2010); In re Supply Guys, Inc., 86 USPQ2d 1488 (TTAB 2008); In re wTe Corp., 87 USPQ2d
1536 (TTAB 2008); In re DSM Pharmaceuticals, Inc., 87 USPQ2d 1623 (TTAB 2008). Generally,
when initially refusing registration on the ground that the subject matter does not
function as a mark, the examining attorney should advise the applicant that the refusal
will be reconsidered if the applicant submits a substitute specimen showing proper
use of the applied-
If the applicant responds by submitting a substitute specimen, and unlike in the original specimen, the mark on the substitute specimen now does not agree with the mark on the drawing (see TMEP §807.12), but the specimen would otherwise be acceptable to identify the goods/services of the applicant and indicate the source of those goods/services, the examining attorney may allow the applicant to amend the drawing if such an amendment would not constitute a material alteration of the mark. If any remaining issues can be handled by examiner’s amendment, and the mark is a standard character mark, the examining attorney may give the applicant the option to amend the drawing by examiner’s amendment. If not, the examining attorney should issue a final refusal that also gives the applicant the option to overcome the refusal by submitting a substitute drawing.
If an amendment of the drawing would be a material alteration, the examining attorney
must issue a final refusal (assuming the application is otherwise in condition for
final refusal), because the substitute specimen does not present a new issue. The
underlying basis for refusal, i.e., that the applicant has not provided evidence
of use of the applied-
See TMEP §§1202 et seq. regarding matter that does not function as a trademark, and TMEP §§1301.02 et seq. regarding matter that does not function as a service mark.
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