1604.12(a)   Specimen for Each Class Required

A §8 affidavit or declaration must include a specimen or facsimile showing current use of the mark for each class of goods or services, unless excusable nonuse is claimed.  15 U.S.C. §1058(b); 37 C.F.R. §2.161(g). When requested by the USPTO, additional specimens must be provided. 37 C.F.R. §2.161(g).

See TMEP §§904.03 et seq. regarding trademark specimens, and TMEP §§1301.04 et seq . regarding service mark specimens.

The specimen must show use of essentially the same mark as the mark shown in the registration, and must be used on or in connection with the goods/services listed in the registration.  A specimen that shows use of a materially different mark ( see TMEP §1604.13 ), or shows use of the mark on other goods or services, is unacceptable.  An affidavit or declaration that does not include an acceptable specimen for each class of goods/services is deficient.   See 37 C.F.R. §2.161(g).

If a single specimen supports multiple classes, the owner may so indicate, and the Post Registration staff need not require multiple copies of the specimen.  The Post Registration staff should enter a Note to the File in the record indicating which classes the specimen supports.

Under 37 C.F.R. §2.161(g)(2), the specimen must be flat and no larger than 8½ inches (21.6 cm.) wide by 11.69 inches (29.7 cm.) long.  If a specimen exceeds these size requirements, the USPTO will create a facsimile of the specimen that meets the requirements of the rule (i.e., is flat and no larger than 8½ inches wide by 11.69 inches long), put it in the record, and destroy the original bulky specimen.  If the copy of the specimen created by the USPTO does not adequately depict the mark, the Post Registration staff 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.

If the specimen is otherwise deficient, the Post Registration staff will require a substitute specimen, together with an affidavit or declaration that the substitute specimen was in use in commerce on or in connection with the goods or services during the relevant period specified in §8 of the Act.   See 37 C.F.R. §2.164; see also TMEP §1604.12(c) regarding substitute specimens.

The USPTO will not return specimens filed with a §8 affidavit or declaration.