Trademark rights are only conferred for marks which are lawfully used in commerce. How do you show the Trademark Office that you are making a valid use of your mark in commerce? By submitting a Specimen of Use.
Specimen of Use
When submitting a federal trademark registration you must provide the Trademark Office with proof that you are using the mark in commerce. This proof is known as a Specimen of Use. The Specimen must meet certain requirements, and failure to provide a proper Specimen can result in a rejection.
What are the requirements for a Specimen of Use?
The requirements for a Specimen of Use are laid out in the Trademark Manual of Examining Procedure (“TMEP”). Section 904.03 of the TMEP provides a number of appropriate Specimens. These include, but are not limited to, Labels and Tags, Catalogs, and Websites.
For websites, the TMEP requires that the page: (1) “contain a picture or textual description of the identified goods”; (2) “shows the mark in association with the goods” and (3) “provides a means for ordering the identified goods.”
Important in the analysis is whether the user actually provides a means to order the goods; advertisements alone are not sufficient. The mark must also be prominently displayed in association with the goods. So what qualifies under the TMEP’s definition?
The TMEP provides helpful examples. For instance, take a look at this example from Cole Haan’s mark:
As you can see, the mark appears near the goods and services (sunglasses), along with a means to order the goods. This is an acceptable Specimen for the Trademark Office.
Specimens of Use are required in order to acquire a federal trademark registration. Different materials may be submitted, but you must meet the requirements laid out in the TMEP. If you have any questions about Trademarks, or more specifically Specimens of Use, you can contact me here.