Responding To A Specimen Refusal After Filing A Statement Of Use
When a company files a ‘Statement of Use’ for a Trademark and receives a Specimen Refusal, there are a few options available to overcome this refusal and “save” the trademark application.
Immediately file an “insurance extension” if there is still time before the deadline to file a StateIf an applicant has a Specimen Refusal, prior to the final deadline to file the Statement of Use, they should file an “insurance extension” immediately or have their Trademark Attorney complete this filing before the deadline.
An insurance extension is a one-time extension that gives a Trademark applicant more time to fix possible defects in the original Trademark application.
When you file an insurance extension there is opportunity to amend your packaging, websites, or other specimens required to meet the USPTO’s standards. Then re-file your Statement of Use. If the new Statement of Use filing meets the requirements, your Trademark application will proceed to registration.
When the deadline to file the Statement of Use has passed, there are a few possibilities.After the Statement of Use deadline, Trademark applicants will no longer be able to change their products, their packaging, their website, or any other specimens to meet the USPTO requirements. In this type of situation, applicants will only be able to submit specimens that otherwise existed before the deadline for the Statement of Use filing.
If an applicant runs out of time, the good news is that specimens might take many different forms.
For example, for a Trademark application for services in which the applicant submitted a business card that did not identify the specific services properly, they will be able to submit their website or any other advertisements as a response to the Specimen Refusal.
In the case of a Trademark application for a product in which the applicant submitted, for example, a website showing the features of the product but not the product itself, then the applicant will be able to file a photograph of the product or its packaging. Additionally, in some circumstances, an applicant may be allowed to submit a retail website that sells the product.
Do not submit a false statement.Specimens can be tricky and often differ wildly based on the products and services included in an application. However, when no proper specimen, can be provided to respond to a Specimen Refusal then the only choice is to re-apply.
In these circumstances, Trademark applicants typically ask: “how would the USPTO know when the specimen was used?”
The answer is simple; the USPTO will not know.
With the exception of extreme circumstances, the USPTO will generally not ask for evidence proving that the specimen was in use when the applicant claims it was. However, Trademark applicants are required to sing a sworn statement to the U.S. government that “the substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior to expiration of the filing deadline for a Statement of Use.”
If this statement is false and an applicant knowingly signs it, then that applicant has committed fraud, and the Trademark application will be subject to cancelation, regardless of how much time has passed since the fraud transpired.
If no proper response can be given to a Specimen Refusal, file a second Trademark application.When it comes to fixing a Trademark disaster, fast action is key. If any issue, such as a Specimen Refusal, arises during the registration process of a Trademark, applicants should strongly consider filing a new application as soon as possible in order to secure a new priority date. However, if an applicant does not respond quickly to an issue, it could result in a third party filing an application for a very similar Trademark, which could invalidate the second application of the applicant’s original Trademark. You must act fast! This is why the help of an experienced Trademark Attorney is crucial when facing Specimen Refusals or any other issues during the Trademark registration process.