Use as basis of registration in the United States; Acceptable specimens
Published on: 05 December 2012
by Mr. Daniel Gurfinkel, Attorney at Law at Dennemeyer & Associates, Chicago
Unlike many trademark registers worldwide, the United States Patent and Trademark Office (USPTO) and US law requires that a mark be used in order to secure registration and then that the mark continue to be used to maintain the registration. In fact a three-year period of non-use, at anytime in the life of the registration, is prima facie evidence of abandonment of the mark and grounds for cancellation of the registration.
The US intellectual property bar has begun referring to the trademark registry as if it were a tree. Registrations that are live, maintained or renewed are considered the living wood of the tree; registrations that are not in use or have not been maintained are now referred to as “deadwood”. There has been a move by the USPTO to remove “deadwood” from the register by amending US trademark law such that the first showing of use is moved to between the third and fourth year from registration rather between the fifth and sixth year. This is an effort to more quickly remove from the register those marks that have never been used in the US (such as those based on foreign registration – section 44e registrations) and marks that were registered for now defunct businesses.
In order to secure registration in the US and then to maintain the registration, use of the mark must be shown and proof of use, in the form of specimens, given. Specimens must be of a type that tends to substantiate the declaration of the mark owner that a mark has been and is in use in the United States or between the United States and another country. The use in Interstate Commerce, commerce that is regulated by the Congress of the US, is required to maintain a registration.
In practice the determination of what is and what is not a specimen has been a question often raised by both US registrants and foreign registrants. What then is a proper specimen for registration, maintenance and renewal of a trademark in the United States?
According to the USPTO, a specimen showing use of a trademark for goods can be of the following types: a specimen for a mark used on goods shows the mark as it appears on the actual goods, or on labeling or packaging for the goods. For example, your specimen may be a tag or label displaying the mark, or a photograph showing the mark on the goods or its packaging. The specimen may not be a “mock-up” of these items but must be a sample of what you actually use or a photograph of the actual packaging. Showing a display of the mark alone is not sufficient; the specimen must show the mark on or in direct connection with the goods.
A specimen that shows the mark being used in a purely ornamental or decorative manner may not be an acceptable specimen. A slogan or a design across the front of a t-shirt or other clothing or a tote bag, for example, would not be acceptable, since it is likely to be perceived as ornamental or decorative rather than a trademark. However, a small word or design, such as a small animal on a shirt pocket, may create the commercial impression of a trademark and be acceptable as a specimen.
A website is an acceptable specimen if the mark appears near a picture of the goods (or a text description of the goods) and your customers can order the goods from the website. A website that merely advertises the goods is not acceptable. You must provide an actual screenshot of the website; i.e., merely providing the website address is not acceptable.
The following are not acceptable specimens for trademarks associated with goods: invoices, announcements, order forms, leaflets, brochures, publicity releases, letterhead, and business cards generally are not acceptable specimens.
According to the USPTO, a specimen for a mark used in connection with services must show the mark used in providing or advertising the services. For example, your specimen may be a photograph of a business sign, a brochure about the services, an advertisement for the services, a website or webpage, a business card, or stationery showing the mark. The specimen must show or contain some reference to the services, that is, it is not just a display of the mark itself.
For example, if the mark sought to be registered is “T.MARKEY” for retail stores featuring men’s sportswear, a specimen that only shows the wording “T.MARKEY” and no other matter would not be acceptable, but a specimen that shows the wording “T.MARKEY“ on a clothing store sign would be acceptable.
The following are not acceptable specimens for trademarks associated with services: a printer’s proofs for advertisements or news articles about your services are not acceptable because they do not show your use of the mark.
In all cases it is actual items that show the use of the mark in association with the goods or services as directed to the consumers of the goods or services that will be considered good specimens.
Specimens should be in the form of jpg or pdf files having a size no larger than 5MB. The selection of specimen should be made by the mark owner and not left to his US attorney. The choice is a business decision and must have the weight of actual knowledge that the particular mark is in use in commerce that can be governed by the US Congress – knowledge that only the owner of the mark has.
 With the exception of marks secured based on foreign registration in the home trademark office of the registrant (section 44e) or registrations extended to the US from the International Bureau of Madrid (section 66).
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