There are a few ways that trademark applications can be refused. One common reason, which this blog will focus on, is the rejection of a trademark application due to submission of an unacceptable specimen. We will discuss some reasons the USPTO will refuse a trademark specimen and outline what you can do in response.
What Exactly is a Trademark Specimen?
A specimen is required for most trademark applications. Essentially, it is a sample of your trademark or service mark demonstrating how it is currently being used in commerce. It should show how the mark is being directly used with your goods or services being offered in the marketplace. It should be noted that the USPTO prefers electronic specimens; examples include photographs and screenshots (of your website, for instance). An acceptable specimen should accurately portray what the consumer sees.
Why Do Trademark Specimens Get Rejected?
There are a few common threads recognized between rejected trademark specimens. Some of these reasons that continually pop up include:
- The specimen has not yet been in use in commerce. Specimens that depict goods or services that are not currently in the marketplace will be rejected. Models, mock-ups, or drawings, for instance, are not acceptable.
- The specimen does not correspond to the trademark class mentioned in the application. There are 34 trademark classifications, along with 11 service mark classifications. Many of these classifications are nearly identical to each other, but your specimen must be specific enough to connect your proposed mark with the classification you identified in the application.
- The specimen does not clearly show the mark in connection with the goods/services. For your specimen to be deemed acceptable, it must be the original trademark (not an alteration) in full view. Anything else will result in a rejection.
How Can You Respond?
Depending on the reason for refusal, you might be able to submit a substitute specimen. This, more or less, is exactly what it sounds: a second-round specimen that otherwise fulfills the USPTO’s requirements. An important note here is that the substitute specimen must have been used in commerce on or before the original application’s filing date.
If the proposed mark was submitted for an “in use” trademark application, you might be able to change the application to “intent to use” if the reason for the refusal was that the mark was not being used in commerce. Yet another method for responding to a specimen refusal is simply submitting a “true, unaltered” copy of the specimen originally submitted.
Sometimes, though, the best course of action is to abandon the current application and submit a new one. If you are having to respond to a specimen refusal or preparing your trademark application, the surest way to success is retaining a knowledgeable IP law firm. Lockhart IP would be thrilled to help you and your business secure your intellectual property so you can secure your long-term success. Get in touch with us through our website today.