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.