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Acceptable specimens are key to strong trademark protection

Jennifer Visintine December 5, 2011

One of the prerequisites to obtaining and renewing a federal trademark registration is alleging use of the mark in commerce and submitting an acceptable specimen to the United States Patent and Trademark Office as evidence of such use. Questions often arise, as to what types of specimens are acceptable, and whether a trademark owner’s actual use of its mark matches the mark covered in the application or registration. 

What types of specimens are acceptable? 

For each class of goods and/or services covered in an application or registration, the Trademark Office requires evidence, i.e, a specimen, showing the mark is being used on or in connection with the goods, or in the sale or advertising of the services in commerce. 

For goods, an acceptable trademark specimen is a label, a tag, an instruction manual, a container for the goods, or a display associated with the goods. Regardless of the type of specimen, in each case, the trademark owner’s evidence of use of its mark 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. 

Although many types of specimens are straightforward, the meaning of “a display associated with the goods” has evolved as both technology and the manner in which companies conduct business have changed. Displays include items such as point-of-sale banners and window displays, but also include certain catalogs and electronic displays that the Trademark Office views as analogous to point-of-sale materials used in connection with the sale and purchase of products in a retail store. Given this analogy, the Trademark Office has for many years accepted catalogs or similar materials as specimens so long as they include an image of the relevant product and ordering information, and create an association between the mark and the relevant product. As trademark owners have expanded their use of the internet to promote and sell products, the Trademark Office applied similar reasoning to such specimens, finding that the web page is akin to a banner encouraging consumers to buy the product, and the online purchasing process is akin to bringing the product to a cashier.

As is the case with catalogs and other specimens, it is important that any internet or online evidence submitted as evidence to prove use show the mark in a manner that creates an association with the relevant goods. For example, a specimen generally creates this type of association when the mark is used in close proximity to an image of the product on an internet website. Although a visual depiction of a product is important to determine whether a specimen sufficiently associates a mark with a product, it is no longer a mandatory requirement. 

Additionally, the Internet or online evidence should contain ordering information that allows consumers to purchase the relevant goods. The mere fact that a website contains contact information for the trademark owner or links to online distributors is not necessarily sufficient. Rather, the website should contain some indication that the company is accepting offers to purchase its products or other content that makes clear that the site is intended to sell products and not just advertise such goods. For example, the Trademark Office is more likely to accept a website specimen if the relevant page provides ordering instructions, other information necessary to complete an order (e.g., a phone number identified for use in placing orders), and/or a means for customers to place an order online. 

One important difference between the specimens acceptable for goods and those acceptable for services relates to advertising materials. Mere advertising is not sufficient to show trademark use in connection with goods. Thus, material that is intended solely to provide consumers with information about a product is not acceptable. For example, items such as advertising circulars and brochures do not qualify as “displays” unless there is evidence that such advertising materials 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. Other types of materials that do not typically qualify as acceptable specimens for goods include price lists, invoices, shipping documents, announcements, press releases, stationery and business cards. Because of the different requirements for goods and services, many of these specimens would be acceptable for services. 

In some respects, it is thus easier to show use of a mark in connection with services than goods. Other types of specimens that are often acceptable to show use of a mark in connection with specimens include magazine and other advertisements, brochures, billboards, direct mail leaflets, web pages, business cards and letterhead showing the relevant mark and providing information about the associated services. Specimens that do not refer to the relevant services may also be acceptable if the specimen shows use of the mark while performing the services. 

In either case, it is important that the specimen show how the mark is used in commerce. Thus, a “printer’s proof” showing how a trademark owner plans to use its mark and other documents used purely for internal business purposes are not acceptable. Put simply, the specimen should show the mark just as consumers view the mark when purchasing the product in the marketplace, whether it be a copy of a label, a photograph of product packaging, or a screen shot of a web page. 

What if I changed how I use my mark?

Trademark owners often change how they use their marks before obtaining a registration, or modernize their mark over time after obtaining a registration. Such changes and modernization may affect a trademark owner’s ability to obtain or renew a registration. Trademark law requires that the display of the mark in the evidence of use be a substantially exact representation of the mark shown in the drawing of a trademark application or registration. This determination is fact specific, depending on each particular mark and the differences in how it is displayed in the drawing and the specimen. So long as the mark as shown in the specimen is a substantially exact representation of the mark as shown in the drawing, the Trademark Office will accept the specimen of use. 

If the drawing of the mark in a pending application is not a substantially exact representation of the mark as shown on the specimen, a trademark owner may amend its application if the amendment to the drawing of the mark is not a material alteration of the mark. A material alteration of the mark occurs if the old format of the mark and the new format of the mark do not create the same general commercial impression. This determination is based on whether the amendment would require republication of the mark in order to present the mark fairly for opposition purposes. For example, the Trademark Office may permit changes such as adding or deleting a hyphen (e.g., amending ABC CO. to ABC-CO.) or changing the style of lettering or size of words (assuming, of course, that it does not create a different commercial impression). 

Trademark renewals are treated slightly differently, as the Trademark Office will allow renewal on the basis of a label that presents the mark in a somewhat different form than that shown in the registration, if the specimen does not show a material alteration of the mark as registered. Under such circumstances, the Trademark Office will not require that the trademark owner amend its registration, though it is permitted to do so.