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-shirts and hats is showing the potential mark decorating the front of the item. According to USPTO rules, this type of use is ornamental  and not an indication of the source of the goods, the source would be on a tag or somewhere less conspicuous. Unless a better specimen and use of the mark are provided to the USPTO, this type of specimen will lead to the mark achieving no registration or only Supplemental Registration because of ‘Ornamental Use of the Mark.’

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.

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-Dad Lure Co. v. Creme Lure Co., 143 USPQ 358 (TTAB 1964).

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 1-651-500-7590.

For more information see TMEP 904 Specimens