USPTO Practice: Specimens
Many Australian businesses look to expand in overseas markets and as part of this expansion need to protect their trade marks in foreign countries. According to IP Australia’s Australian IP Report 2023, the United States is one of the top 5 markets for Australian businesses filing trade marks overseas.
However, the procedure for filing trade marks in the United States is significantly different to Australia. One of those differences is the requirement to submit “specimens” during the prosecution of the trade mark application and as part of the ongoing maintenance of the trade mark registration.
What is a specimen?
A specimen is a sample of your trade mark showing how you use the trade mark in commerce. Preliminary use, such as on beta websites or designer mock-ups, will not be acceptable specimens. Specimens submitted to the United States Patent and Trademark Office (USPTO) are nearly always submitted electronically and are usually photographs or screenshots.
When do I need to submit a specimen?
If your trade mark application is based on “use in commerce” or “intent to use,” you are required to submit a specimen before your trade mark will be registered. If your application is based on a foreign application or registration, or you filed under the Madrid Protocol, you are not required to submit a specimen in order to register your mark.
However, all trade mark owners are required to submit specimens to maintain their registrations. The United States Trademark Register is a use-based register. Trademark registrations are entitled to be registered only for goods or services for which the trademark is in use in commerce and specimens of use must be filed between the fifth and sixth year after registration, and then every ten years from the registration date, absent special circumstances.
How many specimens?
You must submit one specimen for each class of goods or services in your application or registration maintenance filing. You do not need to submit a specimen for every good or service listed in the application or registration. However, the Examiner has discretion to ask you to submit additional specimens if needed.
What is an acceptable specimen?
A Columbia Law Review reported that in 2017, almost 67% of trade mark applications filed in Class 25 (apparel, footwear and headgear) by Chinese applicants contained fraudulent specimens.
Because of a rise in fraudulent specimens being submitted to the USPTO, Examiners at the USPTO have taken a much stricter approach in the review and acceptance of suitable specimens.
Accordingly, it is important for you to understand what is and what is not a suitable specimen for the USPTO.
It must be an actual example of how you use your trade mark in commerce. It cannot be a mock-up, draft label or altered image.
It must show your trade mark in use with the goods and/or services in your trade mark application.
It must be same trade mark as shown in your application. Even small changes will not be be accepted. If you filed the trade mark in colour, your specimen must be in the same colours.
It must be use by the trade mark owner and not a third party.
The USPTO Trademark Manual of Examining Procedure (TMEP) provides several detailed and carefully explained examples of acceptable specimens.
Specimens for goods
Specimens for goods may include:
A label or tag attached to the goods, such as a clothing label or the label on a wine bottle.
Your product container or packaging.
A website screenshot.
Specimens for services
Specimens for services may include:
An advertisement or brochure promoting your trade mark.
A website screenshot.
Business signage and stationery.
Special rules for website specimens
If you submit a website specimen such as a screenshot or printout of the website, the specimen must show the URL and the date you accessed or printed the screenshot or printout. The TMEP has provided a detailed explanation of acceptable and unacceptable website specimens.
In general, and in addition to showing the URL and date, the website printout or screenshot must:
Show the trade mark directly associated with the goods or services. If the trade mark is too far from the goods, such as if the trade mark only appears separately in the footer, the specimen may be refused.
Depict the trade mark in connection with the goods/services appearing in the trade mark application or registration.
Not just be advertising. There must be a point-of-sale function, such as a shopping cart or ordering information. A “Contact Us” button is not sufficient.
USPTO Audits
The USPTO randomly audits specimens that are filed in support of the maintenance of trade mark registrations. If you do not respond to the audit, your registration will be cancelled. If you respond, but do not provide proof of use for the relevant goods or services, you will be required to delete these goods and services from your trade mark registration. In addition, you must pay a US$250 deletion fee per class each time goods or services are removed, and possibly a US$100 deficiency surcharge. The USPTO has already cancelled or removed goods or services from registrations in more than 50% of audited registrations!
Our lawyers are U.S.-qualified, have worked in U.S. law firms and have significant experience handling trade mark applications and maintenance requirements before the USPTO. Contact us today if you would like help in protecting your trade marks in the United States.