904.02 Physical Form of Specimens
904.02(a) Electronically Filed Specimens
In an electronically filed application, allegation of use, affidavit of use under 15 U.S.C. §1058 or §1141k of the Trademark Act ("§8 affidavit" or "§71 affidavit"), or response to an Office action, the specimen(s) must be in .jpg or .pdf format. 37 C.F.R. §§2.56(d)(4), 2.161(g), 7.37(g). If the nature of the specimen is unclear, the applicant should describe what it is and how it is used. See TMEP §904.03(d) regarding electronic and digital media attachments and §904.03(f) regarding specimens for sound marks.
Sometimes, although the application indicates that a specimen is included, the specimen is not visible in the record due to a technical problem that occurred during submission of the application. In this situation, the examining attorney should first send an e-mail to the TEAS mailbox to ask whether the problem can be fixed by uploading the file again. If it cannot, the examining attorney must request that the applicant submit: (1) the same specimen (or a true copy) that was attached to the original TEAS submission; and (2) a statement by the person who transmitted the original TEAS submission that the specimen being submitted is a true copy of the specimen originally filed through TEAS. This statement does not have to be verified. Alternatively, the applicant may submit a different specimen from that initially filed, together with an affidavit or declaration of use of the substitute specimen. See TMEP §904.05 regarding the requirements for an affidavit or declaration supporting use of substitute specimens.
The USPTO prefers that the specimen, whether a true copy of the original or a substitute, be submitted electronically via the Trademark Electronic Application System ("TEAS"). In TEAS, the Response to Office Action form can be accessed by clicking on the link entitled "Response Forms" at http://www.uspto.gov.
904.02(b) Paper-Filed Specimens
In a paper-filed application, allegation of use, affidavit of use under §8 or §71 of the Trademark Act, or response to Office action, the specimen(s) must be flat and no larger than 8½ inches (21.6 cm.) wide by 11.69 inches (29.7 cm.) long. 37 C.F.R. §2.56(d)(1). The USPTO may create a photocopy or facsimile for the official record and destroy the original.
When the applicant cannot supply an actual specimen meeting these size requirements due to the nature or manner of use of the mark, the application, allegation of use, affidavit of use, or response must include a facsimile, such as a photograph, photocopy, or other acceptable reproduction, that is a suitable size and clearly shows how the mark is used in commerce.
Facsimiles or photographs of actual specimens are preferred. Facsimiles should show the whole article to which the mark is applied, or enough of the article so that the nature of the article can be identified. The mark and all other pertinent written matter on the article should be clear and legible. For example, product photographs appearing on folders or brochures that show the trademark on the applicant's goods are acceptable facsimiles. It is permissible to show the complete article in one photograph and the written matter in another, so that the written matter will be legible, or to show different views of an article either in a single photograph or in separate photographs.
A photocopy or reproduction of the drawing is not an acceptable specimen or facsimile. 37 C.F.R. §2.56(c).
If color is a feature of the mark, the applicant should submit facsimiles made by color photography, or by any process that reproduces in color. See TMEP §904.02(c)(ii).
If an applicant submits a specimen that exceeds the size requirements (a "bulky specimen"), the USPTO will create a facsimile of the specimen that meets the size requirements of the rule and destroy the original specimen. 37 C.F.R. §2.56(d)(2). If the copy of the specimen created by the USPTO does not adequately depict the mark, the examining attorney will require a substitute specimen that meets the size requirements of the rule and an affidavit or declaration verifying the use of the substitute specimen. See TMEP §904.05 regarding affidavits supporting substitute specimens.
If necessary, the examining attorney may require one actual specimen for examination purposes, under 37 C.F.R. §§2.56(a) and 2.61(b).
904.02(c) Additional Requirements
904.02(c)(i) Other Materials Required for Examination
During examination, an examining attorney also has the discretion to request additional materials, under 37 C.F.R. §2.61(b), if necessary for proper examination of the mark. TMEP §814. For example, if the mark is a configuration of the goods or of the container for the goods, the examining attorney may require one actual product or container. Or the examining attorney might require a complete copy of a publication in order to determine whether a mark is merely descriptive of the goods. See TMEP §904.02(c)(iii) regarding marks used on publications.
In specific cases, such as when an applicant submits additional materials in response to a requirement made by the examining attorney, and the materials do not meet the size parameters identified above, the USPTO may create facsimiles of these materials to be entered into the record and destroy the originals. However, the examining attorney should encourage the applicant to submit a photograph of the specimen(s) or evidence for the record.
904.02(c)(ii) Specimens for Marks Comprising Color
If color is a feature of the mark, or if the mark consists solely of color, the specimen must show use of the color. 37 C.F.R. §2.51; TMEP §807.12. Note: In an application filed on or after November 2, 2003, if an applicant submits a color drawing, or a description of the mark that indicates the use of color on the mark, the applicant must claim color as a feature of the mark. 37 C.F.R. §2.52(b)(1); TMEP §807.07(a)(i).
If the applicant submits a specimen that is not in color or not in the appropriate color, the examining attorney will require the applicant to file a substitute specimen that shows use of the appropriate color(s). See TMEP §904.05 regarding substitute specimens.
See also TMEP §1202.05(f) regarding specimens showing use of marks that consist solely of color.
904.02(c)(iii) Specimens for Marks Used on Publications
An application for registration of a mark for publications is treated the same as any other application with respect to specimen requirements. The USPTO does not require a complete copy of the publication or a title page in every case. However, the examining attorney may require a copy of the publication under 37 C.F.R. §2.61(b) if he or she believes it is necessary for proper examination. For example, a copy of the publication might be necessary to determine whether a mark is merely descriptive of the goods.