This March we shared insights on common pitfalls when submitting specimens of use to the U.S. Patent and Trademark Office (USPTO).
If you’ve filed a trademark application with the USPTO based on use or intent to use, you know you must submit a specimen to show you’re using the applied-for mark in commerce with the listed goods and services. This may seem like a minor step in securing a trademark registration, but there are common pitfalls that applicants fall into that delay registration or, in the worst case, lead to an abandoned application.
Knowing common pitfalls and how to avoid them from the beginning of the application process can make the difference between a smooth path to registration and costly delays. Understanding these issues early helps ensure you apply for the right mark with the right goods and services and maximizes your chances of success.
Each Tuesday in March, HSE Trademark Attorney Amy L. Hahn Paris, former USPTO Trademark Examining Attorney, shared a common specimen pitfall and how to avoid it as part of our Common Specimen Pitfalls LinkedIn series.
A common pitfall to avoid when submitting a specimen of use is submitting mismatched marks. When submitting a specimen, make sure the mark on the specimen matches the applied-for mark. The US Patent and Trademark Office (USPTO) will generally need to see all the elements in the applied-for mark on the mark on the specimen, although the specimen may often contain additional elements.
If the applied-for mark is TRADEMARK TUESDAY and the specimen shows TRADEMARK TUES., those don’t match! Some good news though: so long as the mark on the specimen isn’t a material change from the applied-for mark, the USPTO might let you amend your applied-for mark.
2. Submitting Advertising for Goods
The second common pitfall to avoid when submitting specimens of use is submitting advertising for goods. Generally, advertising for goods is not acceptable as a specimen. This includes brochures, price lists, announcements, press releases, and social media posts, among numerous other forms of advertising.
So, what is acceptable for goods? The most common appropriate specimens include a photo of the goods themselves, product packaging, or displays associated with the goods.
3. Forgetting the URL and Date in a Webpage Specimen
Our Trademark team’s third common pitfall to avoid when submitting specimens of use might seem simple but can result in an office action from the US Patent and Trademark Office (USPTO) if forgotten. When submitting a webpage specimen, don’t forget to include the URL of the webpage and the date the webpage was accessed either in the specimen or in the USPTO filing.
4. Submitting Digitally Created or Mockup Specimens
Our Trademark team’s fourth common pitfall to avoid when submitting specimens of use is submitting a digitally created or mockup specimen. What is a digitally created or mockup specimen? It can be difficult to identify! In general, avoid superimposing your mark onto goods via photo editing software or submitting a mockup of what your mark would look like on a product.
Please note these tips apply generally, but there are exceptions to each pitfall that we address in our Common Specimen Pitfalls series. Contact a member of the HSE Trademark team to guide you through submitting acceptable specimens and navigating a specimen refusal.
For support with navigating specimen refusals or strengthening your application connect with a member of the HSE Trademark team.