If you’ve gone through a trademark registration process or are preparing to file an application for trademark registration then you are likely aware of the one requirement to submit a “specimen showing use of the mark in commerce.” The specimen must show the applied-for mark as used on or in connection with the identified goods/services in commerce.
There are a number of different type specimens that can be submitted. However, I often advise my clients to try and submit a specimen that the trademark office is comfortable processing. The type specimen that is commonly submitted. The reason? In prosecuting a trademark application we want to try and make the process as normal and as uneventful as possible. Providing the trademark examiner with a type specimen that he/she is use to receiving is one way to accomplish uneventful. However, regardless of the type specimen, the trademark applicant’s specimen must demonstrate that the relevant consumer will make an association between the mark and the relevant goods “in the context of the sale of the goods.”
In most cases, where the trademark is applied to the goods or the containers for the goods by means of labels, a label is an acceptable specimen. And by the way, a photocopy or other reproduction of the specimen of the mark is most often used rather than for example, submitting an actual label. Also, if the trademark is physically stamped on the goods or on the container, then again, most often a photo of the goods with the stamping displayed will be acceptable.
Another acceptable specimen might be a photo of a display screen projecting the identifying mark on an Internet website. Such a specimen is becoming rather common and acceptable if it appropriately displays the subject mark used in association with the identified goods. I have also simply printed the website page and identified the web site address for the examiner.
But beware, mere advertising is not always sufficient to show trademark use in connection with goods. For example, items such as advertising circulars and brochures do not qualify unless there is evidence that such advertising material are part of a point of sale presentation. Similarly, web pages that merely provide information about a product are not acceptable unless they meet the other requirements described above and are used in the context of the sale of the goods. Other types of materials that do not typically qualify as acceptable specimens for goods include price lists, invoices, shipping documents, announcements, press releases, business cards and stationary.
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