Trademark Specimen: All You Need to KnowTrademark Law ResourcesTypes of TrademarksHow To Register A Trademark
Trademark specimen is a sample of how the company and holders use the mark its important for proving a logo or trademark is associated with a product or service5 min read
2. Why Is a Trademark Specimen Important?
3. How to Choose a Trademark Specimen
4. Examples: What Could Happen When You Don't Use Trademark Specimen?
5. Common Mistakes
6. Frequently Asked Questions
7. How to File
Updated November 18, 2020:
What Is a Trademark Specimen?
A trademark specimen is a sample of how the company and the trademark holder use the mark. The United States Patent and Trademark Office accepts different formats into evidence. In the case of products, specimens can be labels and packaging, a logo displayed on the product itself, etc. In the case of services, brochures, flyers, and advertisements can be submitted as trademark specimens.
The main purpose of submitting a trademark specimen is to prove that the logo or trademark is associated with the product or service. Specimens have to be submitted to and registered with the Principal Register of the United States Trademark Office to show how the mark connects to the service or product.
Why Is a Trademark Specimen Important?
A trademark specimen must be submitted to the Principal Register, according to the Trademark Manual of Examining Procedure (TMEP) 904.03. There are specific requirements as to what is acceptable as a trademark specimen and in what format they are attached to the trademark application. These include existing logos and labels, letterheads, leaflets, or advertising materials. One separate specimen is needed for all International Classification application.
The specimen should show the trademark as it is claimed and used in the trademark application. This attachment is usually required for section 1(a) use-based trademark application. This sample proves that the company is using the claimed mark in connection and association with its company activities (products or services). Trademark specimens are not required for section 1(b) intent to use applications at the time of application, only when the owner starts using it.
How to Choose a Trademark Specimen
When submitting a 1(a) use-based trademark application, the company needs to prove that its products or services are already associated with the mark. As an example, for a company selling computer software, the logo that displays on the download page and printed on the DVDs sent to a customer can be an acceptable trademark. Further, the company could send samples of invoices on letterhead to prove they are using the mark in association with the product.
In the case of services, such as a company providing consultancy, trademark specimens can be logos displayed on advertising material, business documents, and websites. The main criteria for submitting a specimen is that it is "a display associated with the goods" with no clarification needed. For example, the mark might be confused with others in the same industry, or it may be related to other business activities of the company. For goods, advertising materials and business cards are not acceptable, and labels or packaging material have to be submitted.
It is possible to amend the specimens: material alteration of the mark can be submitted if the new and old mark create a different commercial impression, for example adding or taking away a hyphen or changing the size of the font.
The simple process of submitting a trademark specimen is as follows:
- On the trademark application page, click on the link "Attach/Remove Specimen"
- Choose a JPEG or PDF file to send
- Add a description to the specimen
- Add details such as date first used anywhere and in commerce
Examples: What Could Happen When You Don't Use Trademark Specimen?
Using a trademark specimen is only required for use-based applications. It is not relevant to new trademark registrations when the company has not used the same mark in commerce or business communication before.
Not using a specimen results in a lack of protection for the logo and other marks used by the company. It can result in a loss of business due to consumer confusion. If the mark is not registered for protection, other companies can register it, causing long legal battles. Further, trademarking a logo or specimen protects the brand of the company and increases its reputation.
One of the mistakes companies make is that they assume just because they use a mark they can automatically claim it and prevent other companies from using it. This is not the case. Submitting a trademark specimen strengthens the application and lets the USPTO know that the mark is already associated with the company's products or services.
Submitting advertising materials only instead of product or service representations (logos and labels) makes the application for trademark incomplete, lengthening the process of approval. Companies should consult with professional lawyers before submitting files with their application.
While it is not required for companies to send trademark specimens for "intent to use" applications, it can help. It provides more protection of intellectual property. If they have already developed a logo and product labels, they must let the government agency know about the intended use of it.
If a company changes how they use the mark, they need to submit new trademark specimens, and failing to do so can create a great disadvantage.
Frequently Asked Questions
- What are the benefits of submitting a trademark specimen?
It provides companies with the protection of the mark associated with their products or services. It reduces the chances of other companies claiming the same logo or label.
- What types of trademark specimens are acceptable for products?
For products, specimens can be labels, containers, product photographs, screenshots, point-of-sale displays, label tags, packaging slips are acceptable.
- What types of trademark specimens are acceptable for services?
For services, advertising, business documents, marketing materials, and communication tools are acceptable because they clearly display the connection between the service and the mark.
- What is the main difference between a specimen and a drawing?
A drawing shows what the mark is while the specimen shows how the business is intending to use it in advertising and product display.
How to File
Trademark specimen applications are filed on the USPTO's Trademark Electronic Application System (TEAS), along with the rest of the application. In the case of paper applications, the minimum size of the specimen is 8 ½ by 11 inches.
In some cases, companies want to claim a sound mark, so an audiotape or recording can be submitted.
It is important to note that a separate specimen is submitted for each type of product or services associated with the given trademark.
If the mark is already used by the company, it is necessary to file an Allegation of Use for each product and service.
Alternatively, consult with a trademark attorney to find out more about the trademark specimen submission guidelines. If you need help, try posting your question to UpCounsel's marketplace. UpCounsel only accepts the top five percent of lawyers. They come from schools like Harvard and Yale Law. They average 14 years of legal experience so you know you're in good hands.