There is a step of the registration process of trademarks that you must be informed of prior to filing: the tangible proof of your use of your goods and/or services in commerce required on your application.
Trademark attorneys must walk a delicate balance in the name of protecting their clients: filing in a way that gives our clients the broadest amount of protection, while at the same time, not filing so broadly that the USPTO can claim our clients are not using “all claimed specimens” in commerce.
In order to make sense of all of this, first, we must determine how “use in commerce” is defined by the USPTO as “What Is the Date of First Use in Commerce?
A date of first use in commerce is the date when (1) the goods were first sold or transported, or the services were first rendered, under the mark in a type of commerce that may be lawfully regulated by the U.S. Congress (such as interstate commerce or commerce between the United States and a foreign country), and (2) such use was bona fide and in the ordinary course of trade.
For more information about a date of first use in commerce, see TMEP §§903.02, 903.03, 1104.10(b)(iv), 1109.09(a).”
If you are using your goods/services in commerce, how do we prove “first use”?
A “specimen” is simply another word for “tangible proof”, and the specimens used in the registration must show proof of each type of good and/or service for which you are requesting trademark protection. Specimens should act as a “source indicator” for consumers. The specimen is the tangible, visible proof of your goods/services used in the marketplace, from the perspective of the consumer. According to the USPTO, “a specimen could be a photo of a label or tag used on your goods, a photo of outdoor signs for services provided at that location, a website where your goods can be purchased or ordered, or a website advertising your services”. For many online businesses, screenshots of websites showing each aspect of your goods or services (available for purchase) are sufficient.
When are specimens required?
“If your application is based on “use in commerce” or “intent to use,” you are required to submit a specimen. You must submit at least one specimen for each class you have indicated as needing protection in your application. For “intent to use” (1B applications), specimens are submitted after the filing of the registration.
What is an acceptable specimen? According to the USPTO, you must:
If you don’t meet these requirements, the USPTO will refuse to accept your specimen.
What will routinely be denied? The USPTO lists three common reasons specimens are refused:
Because specimens must show your trademark as used in commerce, it cannot be a printer’s proof, digitally altered, or pre-sale goods for orders not yet available, etc. This last point is crucial, because oftentimes, a business owner will (understandably) get in a rush to register their trademark, without even recognizing they are doing so! A good trademark attorney will be honest with you, and let you know if a trademark would be more appropriate later on down the road.
Because educated business owners know they should get a trademark, they will rush (and damage) the process by prematurely adding listings to their websites when the trademark registration is filed, and list them either as “pre sale”, or take them down after the trademark is filed. However, the filing process is long- and the USPTO examining attorney may be reviewing your website, or specimens months down the road, only to find the specimens have been removed. This can be detrimental to the registration process, and result in a costly Office Action or worse.
Trademarks are one of the most important aspects of protecting your brand’s identity, and my hope is this article helps clarify the process for you, so that you have a more clear understanding of just what will be required in the trademark process. Do you have any other questions when it comes to trademarks? Drop them below, or email us any time at firstname.lastname@example.org!