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Mastering Specimens of Use: Tricky, but Essential

Proving up trademark use to the USPTO’s satisfaction can be tricky.

It needn’t be, but it’s not always intuitive, which can lead to mistakes.

The first thing to remember is that the proof of use — called the “specimen” — needs to reflect the exact trademark the applicant applied to register. If the “drawing,” or form of mark the applicant applied to register, is in color, has a box around it, or contains other words, then the specimen needs to have all of those things. The only exception is for very minor — hardly noticeable — differences. This means the applicant needs to be careful to apply to register the precise form it is using or plans to use. Any legally significant difference between the drawing and the specimen will cause the examining attorney to deny the application.

The other main thing to consider is that the proof needs to show the mark being used in the context of the goods or services listed on the application. This means if the application is for a restaurant, the proof needs to show the mark being prominently used to promote the restaurant. This could be on a restaurant sign or menu, for example — as long as the photograph showing such use makes it clear the mark is being used to promote the restaurant. Since a restaurant is considered to be a service, a website screen shot would also work — again, as long as the page prominently showed the mark being used to promote the restaurant.

Goods are different story. The USPTO usually will accept proofs of use of a trademark for goods only if the mark is affixed to the good or is displayed on product packaging. Website screen shots don’t cut it.

Apparel presents its own pitfalls. The government will object to specimens that only show the mark being used for “decorative” purposes. This means that a mark on the chest of a t-shirt, for example, won’t support trademark use. The USPTO deems such use to be just a decoration, rather than an indicator of who made the shirt. To prove up use for clothing, the trademark needs to be on a tag or hang-tag attached to the garment. The same is true for coffee mugs, prints, magnets, and other promotional-type items, though marks can also be displayed on the back or bottom of the item, or on a box or container.

At first, these principles can be hard to learn. However, they need to be mastered because they’re essential to getting a trademark registered.

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