Vondran Legal® - Trademark College: Specimen Refusals - We can help with trademark application and registration, response to office action letters and trademark litigation.  Call us at (877) 276-5084 or fill out our contact form.

Introduction

Our IP law firm assists business owners with trademark applications and response to office action letters from the USPTO.  One typical reason to refuse registration of your trademark is that you have submitted an improper specimen.  There are certain requirements for a proper specimen, and this blog post will show you what a non-final or final office action letter may look like.

USPTO rejection: - New Specimen Required

Here is sample language and case law you may see when the USPTO notifies you of a "non-final" office action letter:

Required Specimen does not show direct association between mark and services. Registration is refused because the specimen does not show a direct association between the mark and the services and fails to show the applied-for mark as actually used in commerce with the identified services in International Class(es) 42.

See Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), (b)(2); TMEP §§904, 904.07(a), 1301.04(f)(ii), (g)(i). 

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark as actually used in commerce for each international class of services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

When determining whether a mark is used in connection with the services in the application, a key consideration is the perception of the user. In re JobDiva, Inc., 843 F.3d 936, 942, 121 USPQ2d 1122, 1126 (Fed. Cir. 2016) (citing Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 1381-82, 103 USPQ2d 1672, 1676 (Fed Cir. 2012)). 

A specimen must show the mark used in a way that would create in the minds of potential consumers a sufficient nexus or direct association between the mark and the services being offered. See 37 C.F.R. §2.56(b)(2); In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ2d 456, 457 (C.C.P.A. 1973); TMEP §1301.04(f)(ii). 

To show a direct association, specimens consisting of advertising or promotional materials must:

(1) explicitly reference the services

and

(2) show the mark used to identify the services and their source.

See In re The Cardio Grp., LLC, 2019 USPQ2d 227232, at *2 (TTAB 2019) (quoting In re WAY Media, LLC, 118 USPQ2d 1697, 1698 (TTAB 2016)); TMEP §1301.04(f)(ii). 

Although the exact nature of the services does not need to be specified in the specimen, there must be something that creates in the mind of the purchaser an association between the mark and the services. In re Adair, 45 USPQ2d 1211, 1215 (TTAB 1997) (quoting In re Johnson Controls Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)).

In the present case, the specimen does not show a direct association between the mark and services in that the specimen, although it bears the applied-for mark, it does not show the mark explicitly referencing the applied-for services. Specimens for services must show a direct association between the mark and the services and include: 

(1) copies of advertising and marketing material,

(2) a photograph of business signage or billboards,

or

(3) materials showing the mark in the sale, rendering, or advertising of the services. See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C).

Any webpage printout or screenshot submitted as a specimen must include the webpage's URL and the date it was accessed or printed on the specimen itself, within the TEAS form that submits the specimen, or in a verified statement under 37 C.F.R. §2.20 or 28 U.S.C. §1746 in a later-filed response. See 37 C.F.R. §2.56(c); TMEP §§904.03(i), 1301.04(a).

Specimen Response options. 

The applicant may respond to this refusal by satisfying one of the following for each applicable international class: 

(1) Submit a different specimen (a verified “substitute” specimen) that:

(a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use

and

(b) shows the mark in actual use in commerce for the services identified in the application or amendment to allege use.

What is a "Verified Substitute Specimen?"

(1) Submit a verified substitute specimen.  A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:

“The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.”

The substitute specimen cannot be accepted without this statement.

(2) Amend the filing basis to intent to use under Section 1(b) (which includes withdrawing an amendment to allege use if one was filed), as no specimen is required before publication. 

This option will later necessitate additional fee(s) and filing requirements, including a specimen.

Contact a Federal Trademark Law Firm

We offer low cost trademark consulting, domain name consulting, TTAB opposition and cancellation proceedings (to cancel trademarks), Mobile application disputes based on conflicting trademark claims, and responses to office action letter. We can also handle complex trademark infringement representation involving mediation, arbitration, and litigation.  Call us at (877) 276-5084 or fill out our contact form.