LEGAL GUIDE
Written by attorney Deepak Malhotra | Dec 21, 2010

How to Prepare a Specimen for a Trademark Application

There are two types of trademark applications that can be filed in the U.S. One is an application for a mark that has already been in use, another is an intent-to-use application.

For a use-based application, a specimen showing how the mark is used must be filed along with the application. For an intent-to-use application, an amendment to allege use, also known as a statement of use must be filed after allowance of the application along with a specimen. Trademark rights are based on use. Along with a specimen, an amendment to allege use must include a verified statement that the mark is in use in commerce, and must specify the date of the applicant's first use of the mark and first use of the mark in commerce for each class of goods/services.

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. A photocopy or other reproduction of a specimen of the mark as actually used on or in connection with the goods is acceptable.

The Office may accept another document related to the goods or the sale of the goods when it is not possible to place the mark on the goods, packaging, or displays associated with the goods. (definition of "use in commerce"). 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. A mere assertion of impracticability may not suffice to establish that such use is impracticable; rather, the record must indicate that the goods are in fact of such a nature. For example, 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.

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.

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.

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. 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, facsimiles comprising sheets of paper or other materials on which impressions of the trademark are stamped or stencilled are normally 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.

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.

The specimen can be sent to the U.S. Patent and Trademark Office by mail or can be filed electronically as a .jpg attachment at www.uspto.gov.

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