Common Questions: How to Prove Use in Commerce (Specimens)

by Christina Frangiosa

This is Part II in a series on establishing use in commerce in the US for federal trademark purposes. Part I was “Common Questions: How to Establish US Trademark Rights.” Part III will discuss a recently announced pilot program of the USPTO to minimize the submission of fraudulent trademark specimens in support of applications for registration.

Clients frequently ask for guidance about what specimens (i.e., examples of current use of their trademarks or service marks) to submit in support of their applications for registration with the U.S. Patent & Trademark Office (USPTO). The answer, to some degree, is “it depends.”

What Specimens are Acceptable for Which Goods/Services?

For additional information on this topic, see also Common Questions: What’s the Difference Between a Trademark and a Service Mark?

The basic guidance from the USPTO’s Trademark Manual of Examining Procedure (TMEP) is as follows:

For applications relating to marks to be used on goods: “A trademark specimen should be a label, tag, or container for the goods, or a display associated with the goods.” TMEP § 904.03.

  • Specific examples of these specimens include: labels and tags affixed to the goods; shipping or mailing labels that show the mark used properly (not just as a trade name or company name); metal or rubber stamping on the goods including by using a stencil or template; normally-used commercial packaging or shipping containers; photographs, screenshots or printouts of a computer or video display screen projecting the identifying trademark for a computer program or video or audio recording; point-of-sale or trade show displays associated with the goods, including banners, shelf-talkers, window displays, menus, and similar devices; and sales catalogs where the ordering information is visible. See generally, TMEP § 904.
    • Note that websites can only serve as specimens for goods if there is a point-of-sale option that would allow purchasers to immediately order the product. See TMEP § 904.03(i) for detailed examples of acceptable and unacceptable website specimens in connection with marks used in connection with goods.
  • Unacceptable specimens of use for goods include: printer’s proofs, drawings of the mark on the goods, digitally-created specimens, mere advertising, business cards, business letterhead, brochures and invoices/receipts. TMEP §§ 904.03(g), 904.04.

For applications relating to marks to be used on services:   Proper use of a service mark may be established with a specimen “(1) showing the mark used or displayed as a service mark in the sale of the services, which includes use in the course of rendering or performing the services, or (2) showing the mark used or displayed in advertising the services, which encompasses marketing and promotional materials.” TMEP § 1301.04. Use in commerce of service marks is limited to those services which are rendered on behalf of others – services rendered for internal purposes only will not qualify (e.g., advertising one’s own goods does not qualify as “advertising services” for purposes of federal trademark registration). TMEP §§ 1301.04(b); 1301.01(a)(ii).

  • Specific examples of service mark specimens include: Letterhead stationery, business cards, or invoices bearing the mark (only if they create an association between the mark and the services – they are not acceptable if they just show the mark and the company name); photographs showing the mark used in connection with a musical performance (e.g., the mark shown on the drum during the performance); sign-in screens, title or launch screens for software services; or screenshots of websites showing the advertising or the rendering of the services.
  • Unacceptable specimens of use for services include: Any specimens that do not adequately tie the mark to the services. For instance, webpages that do not specify the services being rendered, or merely use the mark as a trade name, or social media pages that do not reflect the applied for services (e.g., the applied-for-services are “social networking” but the applicant runs a pet food store and uses its Facebook page to advertise its own services).
  • Examples of specific acceptable/unacceptable specimens can be found: TMEP § 1301.04(i).

How Many Specimens Must You Submit?

In all cases, you must submit one specimen showing your use of the mark in connection with each class of goods or services covered by the application. If you cannot submit this specimen at the time you file your initial application, you must express a bona fide intent to use such mark in connection with these goods and services – and then submit your specimen proving use within a fairly short period of time (roughly, 2.5 years after a Notice of Allowance is issued, including all extensions).

While only one specimen per class is required, the USPTO retains the right to request additional specimens demonstrating each good or service identified in the application.

This diligence in being able to prove actual use in commerce in connection with each good or service does not end when the application matures to registration. Indeed, the requirement continues for maintenance filings due periodically (on a scheduled due date) to prove the mark continues to be used in commerce over time.

The USPTO also recently launched a “random audit” program by which it randomly selects existing registrations and requests specimens of use for every referenced goods in any class. See USPTO Operational News and Updates at 28 (Feb. 9, 2018); see also Director’s Forum: A Blog from USPTO Leadership (Oct. 5, 2016) (“Specifically, for selected registrations, we may require submission of information, exhibits, affidavits or declarations, and additional specimens to ensure that the register accurately reflects the marks are in use in United States for all goods and services identified in registrations, unless excusable nonuse exists.”).

The USPTO has proposed and appears to still be working on a streamlined cancellation procedure to permit third parties to seek cancellation of those registrations where the registrant can no longer demonstrate use, or where the registrant was a foreign entity that was not required to show use at the time of application and for which use cannot now be demonstrated. E.g., Director’s Forum (above); Request for Public Comment on “Improving the Accuracy of the Trademark Register: Request for Comments on Possible Streamlined Version of Cancellation Proceedings on Grounds of Abandonment and NonUse,” 82 Fed. Reg. 22517 (May 16, 2017).

Other Resources

Conclusion

The specimens required to demonstrate use in commerce in support of a trademark for goods can be different from those required to show use of a mark in connection with services. In essence, specimens for use in connection with goods must provide the customer with some opportunity to purchase the goods at issue – either by picking them up from a display shelf in a store, or by clicking a “Buy Now” button that allows instant online purchases. Advertising materials will not suffice for such goods.

Yet, specimens for services can include advertising provided that the mark is used in connection with the offering of the services for sale and there is a sufficient tie between the mark and the applicable services.

Also be aware of the possibility that a particular application may seek to cover the mark in connection with both goods and services – and thus different types of specimens would be required to support each class.