What Are Specimens for Trademark Applications?

This article originally appeared at: https://www.sarahsshepard.com/blog/specimens-for-trademarks

So, you’re thinking about getting started on a trademark application for your business.

Congrats! — this is the first step in safeguarding your products or services and preventing others from copying your brand and turning a profit by ripping you off.

While the trademark registration process is relatively straightforward, many new business owners tend to get their trademarks denied by submitting the wrong type of trademark specimen.

In this article, we’re going to dive into everything you need to know about trademark specimens, so you can submit your application with ease.

Read on to learn more.

What Exactly Is a Trademark Specimen? A trademark specimen, simply put, is a sample of how you’ll be using your brand logo. Trademark specimens are required by the United States Patent and Trademark Office (USPTO) to keep as a record of evidence of your trademark’s use in commerce.

When it comes to products, a trademark specimen can be something as simple as a label, your business packaging, product logos, and anything that would associate your products and brand.

Service mark specimens can be a bit trickier to pin down. Still, flyers, advertisements, and even brochures can be used in their most straightforward form.

The entire point of submitting a trademark specimen when attempting to register your trademark is so that there’s documented proof of your brand’s identity. So no one else can commit trademark infringement .

What Does a Trademark Specimen Look Like? As mentioned above, trademark specimens are the physical ways we associate a brand with its products or services. There are some specific requirements in terms of what’s acceptable as a trademark specimen, as well as the format to be used when attaching them to your trademark application.

It’s important to note that you’ll need to submit an individual trademark specimen per each application.

Essentially the specimen should exhibit the trademark as is — as in how it would be used in real-life marketing sales and advertisements.

For products, the trademark specimen should include one example of the following:

Your product packaging boxes or containers

Your product labels

Tags — such as price tags, sales tags, washing instruction tags, size tags, etc.

The actual product

Point-of-sale displays exhibiting the product on display with the trademark in view

The product’s instruction manual or user information paper

For services, the trademark specimen must include one example of the following:

Copies of any advertising or marketing used for the service

Photographs of billboards or business signs used in commerce

Screenshots of a webpage that includes the associated trademark, description of the services provided, the URL of the webpage, and the date on which the screenshot was taken

When choosing a trademark specimen, it’s important to remember that your business needs to prove that its products or services are already in association with the emblem you’re sending in.

For example, suppose you’re selling computer software. In that case, it’s best to use the logo that’ll be presented on the download page or application (such as the icon). On the other hand, suppose this isn’t a viable option just yet. In that case, you could send an example copy of an invoice or letterhead that uses the words, phrases, or other marks you’re trying to trademark — as long as you plan to use these specific forms once the trademark has been established.

Essentially, the primary criteria for submitting a trademark specimen is that it’s a prominent display of what your products or services are associated with. In other words, the trademark specimen should be something that needs no clarification or explanation.

When Am I Supposed to Submit My Trademark Specimen? Using a trademark specimen only applies to use-based applications. In other words, they’re not necessarily relevant unless you’ve already started using your brand mark in commerce or business communications.

The basic rule of thumb is to submit your trademark specimen with a renewal application between the fifth and sixth year after your initial trademark registration. Then, you’ll need to re-submit your trademark specimen every ten years from your registration date to maintain its good standing with the USPTO.

Under What Circumstances Would My Trademark Specimen Be Denied? As mentioned several times so far, your specimen needs to show your trademark as it’s claimed and used in real life and your trademark application to prove that you’re using it in association with your business’s activities and in the stream of commerce.

More specifically, trademark specimens are only required to be submitted once they’re physically in use. Therefore, submitting your specimen along with an Intent-to-Use (ITU) application, will lead to a potential delay.

Other grounds for denial by the USPTO include the following:

Business stationery and letterheads

Business cards

Your business license

A regular photo of the trademark or a digital created mock-up that’s been altered in any way

Pre-sale orders

A printer’s proof

A web page that’s missing proof of its URL and the date it was accessed

Different versions of the trademark

If you don’t include trademark specimens that meet the USPTO’s requirements, it’ll end up costing you more in time and money just to fix the issue.

That said, it is possible to amend an invalid specimen via material alterations of the mark. That means that you can create a new mark that’s similar but slightly altered, such as adding a hyphen or changing the font size, and so on.

What Happens If I Don’t Use a Trademark Specimen? Not using a trademark specimen is essentially the same as not registering your trademark at all. The result is a lack of protection for your brand logo and any other symbolism you plan to use.

Additionally, not using a trademark specimen can also result in consumer confusion. Without protection, any other business can try to register your logo or any other emblem used for your brand as a means to take your customers. Ultimately, this results in a loss of business overall.

When you trademark your brand and specimens, you won’t have to worry about enduring long legal battles because the USPTO will recognize them nationally. This is also something that secures and strengthens your brand reputation as your business grows since no one will be able to copy the things you use to create your brand’s identity and sell counterfeit products or false services under your company’s brand name.

Differentiating between a registered trademark and trademark specimens can be a little confusing. However, they’re both a necessary part of running a business. Plus, with the help of an experienced Alabama business lawyer, the entire process of registering and submitting your trademark specimen will be straightforward and a fool-proof process.

Contact us today to schedule a consultation with Sarah S. Shepard or another licensed Huntsville trademark attorney about filing your trademark specimen.

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