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Filing a trademark application can be a complex process. In order to successfully register your mark, the United States Patent and Trademark Office (USPTO) mandates that you submit a trademark specimen along with your paperwork. This is a required part of the trademark registration process. Failure to send an acceptable specimen can not only result in delay — but in some cases, you might need to file a new application and potentially lose your priority right to the mark.
All trademark applications that are based on “use in commerce” or “intent to use” require a specimen. A trademark specimen is a sample of your trademark that demonstrates how it is used in commerce. In other words, it serves as evidence regarding how you use the mark in the marketplace in connection with the goods and services listed in your application. The specimen is also what consumers will see and will associate with the goods and/or services.
A trademark specimen can come in a wide variety of forms. For goods, it could be a photo showing the product itself, or the label that is attached to the goods displaying the mark. It might also be a container, packaging, or website that shows the trademark. When it comes to a trademark specimen for services, you might provide the USPTO with an advertisement, brochure, website printout, or promotional and marketing material that shows how your trademark is used for the services. It could also come in the form of a business sign or service vehicle that displays the mark.
Under the USPTO’s guidelines, an acceptable trademark specimen must meet the following criteria:
Unacceptable specimens that don’t meet the USPTO’s requirements can include those that do not show the trademark clearly, in its entirety, or it is a variation of the mark. The USPTO can also refuse to accept a specimen that does not show your own use of the mark — for instance, if you submitted a specimen that appeared in a press release that was meant specifically for the media. A specimen will also be rejected if it is not in actual use in commerce.
A specimen refusal can be overcome in many cases. For example, if you failed to submit an appropriate specimen, you may need to submit a better example to the USPTO. In the event the specimen was rejected because it was not legible, you might just need to send a new copy of the original specimen.
Since trademark filings are done electronically, you should not submit a physical specimen with your USPTO application. Rather, you should send a photograph, screen shot, or printout of how the specimen is used. One specimen must be provided for each class of goods or services listed in the application. The USPTO may request additional specimens if necessary to examine your application.
It is important to be aware of when you must submit your trademark specimen to the USPTO. For use-in-commerce trademark applications, the specimen should be included when you submit your initial application. With an intent-to-use application, the specimen must be submitted after your initial application has been filed. Specifically, when you’re filing an intent-to-use application, the specimen can be submitted either before your application is approved for publication by filing an Amendment of Allege Use — or after you’ve received a Notice of Allowance due to filing a Statement of Use.
All trademark owners must provide the USPTO with a specimen when they file their Section 8 or 71 affidavit or declaration of use between the fifth and sixth year after registration. A specimen must also be filed every ten years from the date of registration.
The trademark registration process can be complex, and it is essential to make sure your application and specimen are submitted correctly to avoid unnecessary delay or rejection of your registration. Located in Ann Arbor, Michigan and serving clients nationwide, the Trademark Lawyer Law Firm, PLLC works with business owners and entrepreneurs regarding a variety of trademark matters, including all aspects of the application process. Contact us today to schedule a complimentary 15-minute consultation to learn how we can help.
Suspensions are when your application is on hold. There are various reasons a trademark application can be suspended. However “likelihood of confusion” with prior application(s) filed and submission of foreign application are the most common reasons the USPTO may suspend an application. During a trademark suspension period, your lawyer will provide guidance on the next steps and whether it might be best to file an argument or pursue a coexistence agreement.
A disclaimer usually refers to a statement which indicates that you are not claiming exclusive rights to use the word(s) or a design element in your trademark application. A disclaimer allows for registration without creating a false impression of the registrant’s rights.
A good example of this is disclaiming “café” if your services are for a café.
If a trademark is not eligible for the Principal Registry, there is sometimes an option to register on the Supplemental Registry.
In cases where the USPTO finds the trademark application is merely ornamental, merely descriptive, or primarily geographically descriptive, the USPTO may allow the application to be registered on the Supplemental Registry. However, over time, the mark may acquire distinctiveness and possibly become eligible for the Principal Registry.
Two dates must be specified in a trademark application:
Date of First Use Anywhere: The “anywhere” refers to use in the U.S. or elsewhere. This is the date the goods were first sold or transported, or the services were first rendered under the mark. The use must also have been bona fide and in the ordinary course of trade.
Date of First Use in Commerce: This is the date when the goods were first sold or transported, or the services were first rendered under the mark in interstate or international commerce. The use of the mark must have been bona fide and in the ordinary course of trade.
The renewal timeframe for a trademark is between the 9th and 10th year anniversary of the trademark registration, and then in ten-year intervals. It is important to be aware that the USPTO also requires a registrant to provide an affidavit at the 5th and 6th years of ownership stating that the trademark is still being used in commerce. Failure to comply with the renewal timeframes or the affidavit requirements will result in the cancellation of the trademark registration.
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