Trademark Specimens
1. What is a trademark specimen? Why do I need one?
To obtain valid intellectual property (IP) rights for your trademark, you must use it in commerce. This means that you need to sell goods or services using the trademark. Proper trademark use includes fixing your trademark to your products or branding your services using the trademark. For obtaining a federally registered trademark, proper use also means selling and shipping the goods across state lines or rendering services to clients outside of your home state.
To obtain a registered trademark with the United States Patent and Trademark Office (USPTO), you need to prove that you are using your trademark in commerce by submitting a “specimen.” A specimen is generally an image file, typically a photograph of the goods or a screenshot of a webpage where goods or services are advertised for sale, purchase, and ordering.
Without fulfilling these requirements, you will not have a valid trademark. Even if the trademark office determines that your trademark is allowable because it is distinct and sufficiently dissimilar from other registered trademarks, your trademark will not officially be registered by the USPTO and protected under US trademark laws until you can demonstrate use in commerce.
2. How and when to submit a trademark specimen
When and how you submit your specimen depends on the status of your trademark. If you have not yet filed a trademark application but have used your trademark in commerce, you can submit a specimen within your initial trademark application as a section 1(a) “use-based” application. There will be a section on the USPTO’s online submission form that will ask you to upload the file containing your trademark specimen.
If you have yet to use your trademark in commerce, you can file your trademark as a section 1(b) “intent-to-use” application. This allows you to submit your specimen later, either as an amendment to the application, prior to the trademark being allowed, or after allowance by filing a “Statement of Use.” In either case, the trademark office charges a $100 filing fee for processing your specimen, reviewing it, and checking if it sufficiently demonstrates proper trademark use. The Statement of Use must be filed within 6 months of the trademark being allowed, though this deadline can be extended up to 5 times by paying additional fees.
3. Conclusion
If you are seeking a United States trademark, be prepared to submit proof of actual use of your trademark by way of a trademark specimen. Even though you can file a trademark prior to using the trademark, failure to submit a timely specimen will result in your application being abandoned. This could end up being a costly failure for your business, so it is important for you and your IP counsel to be on top of it.
**This content is for educational and entertainment purposes only and does not, and is not intended to, constitute legal advice or the establishment of an attorney-client relationship. Seek a licensed attorney.
