904.07 Requirements for Substitute Specimens and Statutory Refusals

904.07(a) Whether the Specimen Shows the Mark Used in Commerce

An application for registration under §1(a) of the Trademark Act or an allegation of use in an application under §1(b) of the Act must include one specimen per class showing use of the mark as used on or in connection with the goods, or in the sale or advertising of the services in commerce. 15 U.S.C. §§1051(a)(1), 1051(c) and 1051(d)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), 2.76(b) and 2.88(b). Initially, the examining attorney must review the specimen to determine whether: (1) the applied-for mark appears on the specimen; (2) the specimen shows that the applied-for mark is in "use in commerce;" and (3) the specimen shows use for the specific goods/services identified.

The following non-exhaustive list reflects examples of problems that may be raised on initial review of specimens:

No specimen is submitted;
The applied-for mark does not appear on the specimen;
The specimen does not show use of the applied-for mark on or in connection with any of the relevant goods or in the sale or advertising of the services;
The specimen is not in "use in commerce" (e.g., a printer’s proof of an advertisement for services);
The specimen is altered/mutilated/unprintable or illegible;
The specimen is merely advertising material for goods;
The specimen is merely a picture or drawing of the mark;
The specimen is a photocopy of the drawing;
The specimen is an electronic display associated with the goods (e.g., an online catalog, or web page display for goods), and fails to include ordering information or pricing;
The specimen is a non-electronic point of sale display and fails to show use of the mark as a "display associated with the goods."

In an Office action addressing such specimen issues, the examining attorney must require a substitute specimen and, if necessary, a supporting affidavit or declaration under 37 C.F.R. §2.20. The Office action must also indicate that pending a proper response to the requirement, registration is refused because applicant has not provided evidence of use of the applied-for mark in commerce. The statutory basis for refusal is 15 U.S.C. §§1051 and 1127.

If the applicant responds by submitting a substitute specimen, and unlike in the original specimen, the mark on the substitute specimen now does not agree with the mark on the drawing (see TMEP §807.12), but the specimen would otherwise be acceptable to show use in connection with the goods/services, the examining attorney may allow the applicant to amend the drawing if such an amendment would not constitute a material alteration of the mark. If any remaining issues can be handled by examiner’s amendment, and the mark is a standard character mark, the examining attorney may give the applicant the option to amend the drawing by examiner’s amendment. If not, the examining attorney should issue a final refusal that also gives the applicant the option to overcome the refusal by submitting a substitute drawing.

If an amendment of the drawing would be a material alteration, the examining attorney must issue a final refusal (assuming the application is otherwise in condition for final refusal) because the substitute specimen does not present a new issue. The underlying basis for refusal, i.e., that the applicant has not provided evidence of use of the applied-for mark in commerce, remains the same. See TMEP §714.05.

904.07(b) Whether the Specimen Shows the Applied-for Mark Functioning as a Mark

The examining attorney must also evaluate the specimen to determine whether the applied-for mark is used in a way that shows that: (1) it identifies the goods/services of the applicant and distinguishes them from the goods/services of others; and (2) it indicates the source of those goods/services. If use on the specimen fails in either regard, the record lacks the requisite evidence that the applied-for mark functions as a mark. The following non-exhaustive list reflects examples where review of the specimen would indicate a failure to function as a mark:

Applied-for mark is used solely as a trade name (TMEP §1202.01)
Applied-for mark is mere ornamentation (TMEP §1202.03);
Applied-for mark is merely informational matter (TMEP §§1202.04 and 1301.02(a));
Applied-for mark identifies the name or pseudonym of a performing artist or author (TMEP §1202.09(a));
Applied-for mark identifies the title of a single creative work (TMEP §1202.08);
Applied-for mark identifies a model number or grade designation (TMEP §1202.16);
Applied-for mark is merely a background design or shape that does not create a commercial impression separable from the entire mark (TMEP §1202.11);
Applied-for mark identifies a process, system, or method (TMEP §1301.02(e));
Applied-for mark is used to refer to activities that are not considered "services" (TMEP §§1301.01 et seq.);
Applied-for mark is used solely as a domain name (TMEP §1215.02);
Applied-for mark is used solely to identify a character (TMEP §1301.02(b)).

If the deficiency in a specimen amounts to failure to demonstrate use of the subject matter as a trademark and/or service mark, the examining attorney must issue a refusal of registration on the ground that the subject matter does not function as a mark, in addition to requiring a substitute specimen. The statutory basis for refusal is 15 U.S.C. §§1051, 1052, and 1127 for trademarks, or 15 U.S.C. §§1051, 1052, 1053, and 1127 for service marks. See In re Osmotica Holdings Corp., 95 USPQ2d 1666 (TTAB 2010); In re Supply Guys, Inc., 86 USPQ2d 1488 (TTAB 2008); In re wTe Corp., 87 USPQ2d 1536 (TTAB 2008); In re DSM Pharmaceuticals, Inc., 87 USPQ2d 1623 (TTAB 2008). Generally, when initially refusing registration on the ground that the subject matter does not function as a mark, the examining attorney should advise the applicant that the refusal will be reconsidered if the applicant submits a substitute specimen showing proper use of the applied-for mark as a trademark or service mark and, if necessary, a supporting affidavit or declaration. See TMEP §904.05 regarding affidavits supporting new specimens. However, in instances where the nature of the mark, such as with informational marks, indicates that consumers would never perceive the mark as source indicating, regardless of the manner of use, no such advisory need be given.

If the applicant responds by submitting a substitute specimen, and unlike in the original specimen, the mark on the substitute specimen now does not agree with the mark on the drawing (see TMEP §807.12), but the specimen would otherwise be acceptable to identify the goods/services of the applicant and indicate the source of those goods/services, the examining attorney may allow the applicant to amend the drawing if such an amendment would not constitute a material alteration of the mark. If any remaining issues can be handled by examiner’s amendment, and the mark is a standard character mark, the examining attorney may give the applicant the option to amend the drawing by examiner’s amendment. If not, the examining attorney should issue a final refusal that also gives the applicant the option to overcome the refusal by submitting a substitute drawing.

If an amendment of the drawing would be a material alteration, the examining attorney must issue a final refusal (assuming the application is otherwise in condition for final refusal), because the substitute specimen does not present a new issue. The underlying basis for refusal, i.e., that the applicant has not provided evidence of use of the applied-for mark as a trademark or service mark, remains the same. See TMEP §714.05.

See TMEP §§1202 et seq. regarding matter that does not function as a trademark, and TMEP §§1301.02 et seq. regarding matter that does not function as a service mark.