Common Mistakes to Avoid When Submitting Trademark Specimens

In a previous post, we discussed the importance of submitting proper specimens when applying for a trademark with the United States Patent and Trademark Office (USPTO). Today, we’ll dive deeper into some common mistakes that can lead to specimen refusals and how to avoid them. Ensuring your specimens meet the USPTO’s requirements is crucial to successfully registering your trademark.

Why Specimens Get Refused

The USPTO requires that your specimen shows how you actually use your trademark in commerce. This means the specimen must demonstrate the trademark's use on or in connection with your goods or in the sale or advertising of your services. Here are some common reasons why specimens are refused:

1. Trademark Not Used with Relevant Goods or Services

Your specimen must show the applied-for trademark used with the specific goods or services listed in your application. If it does not, your application will be rejected.

Example: You own a t-shirt business, but instead of showing your trademark on a t-shirt label or hangtag, you submit an image that doesn’t link the trademark to the t-shirts. This would lead to a refusal.

2. Printer’s Proof of an Advertisement

A printer’s proof is an example of an advertisement or label that hasn’t been used in commerce. This type of specimen is not acceptable.

Example: Submitting a draft advertisement for your services that has not been distributed to the public will be refused.

3. Digitally Created or Altered Images

Specimens must be real-life examples, not digitally created or altered images.

Example: You find a stock image of a t-shirt hangtag online, superimpose your trademark onto the picture, and submit that as your specimen. This mockup will be rejected.

4. Advertising Material for Goods

For goods, advertising material alone is not acceptable. The specimen must show the trademark on the goods or their packaging.

Example: Submitting a flyer advertising your handkerchiefs without showing the trademark on the actual product or its packaging will be refused.

5. Merely a Picture or Drawing

Submitting a picture or drawing of the trademark without showing its use in commerce is not sufficient.

Example: A photocopy of your trademark drawing without it being on an actual product or packaging will be rejected.

6. Webpage Specimens Without URL or Date

Webpage specimens must include the URL and the date the page was accessed or printed. Without this information, the specimen will be refused.

Example: A screenshot of your online store selling t-shirts must show the URL and access date to be acceptable.

Trademark Not Functioning as a Trademark

Even if your specimen shows the trademark on or with your goods or services, it must also show that the trademark functions as a trademark. Here are some common reasons for refusals related to trademark function:

1. Mere Ornamentation

If the trademark is used purely as decoration and not as a brand identifier, it will be refused.

Example: A slogan printed in large letters across the front of a t-shirt, where it is perceived as decoration rather than a brand identifier.

2. Identifies Name or Pseudonym

If the trademark is simply a name or pseudonym of a performing artist or author, it may not function as a trademark.

Example: Using a band’s name on merchandise without it being recognized as a brand for goods or services beyond the performance itself.

3. Identifies Title of a Single Creative Work

If the trademark is used solely as the title of a single creative work, it will not be accepted.

Example: A book titled "The Magic School Bus" is not enough on its own unless it’s part of a series or used to identify a source of a variety of goods or services.

4. Identifies Character from a Creative Work

Using the name of a character from a creative work must be shown as a source identifier for goods or services.

Example: The Magic School Bus® is recognized as a brand for a series of children’s books, not just one book, and its use on book covers and in advertisements showed it functions as a trademark.

Conclusion

Avoiding these common mistakes when submitting your trademark specimens can save you time and effort. Always ensure your specimens accurately depict how your trademark is used in commerce, directly associate the trademark with your goods or services, and demonstrate the trademark functioning as a source identifier. If you have any questions or need assistance with your trademark application, our team is here to help. Reach out to us for expert guidance and support.

About the Author

Amanda Bynum is an experienced attorney specializing in criminal defense and intellectual property law. With a passion for legal education and helping small businesses protect their brands, Amanda provides comprehensive legal services and valuable insights through her blog at AJB Law Firm, LLC.