1604.12    Specimen Showing Current Use of Mark in Commerce

1604.12(a)    Specimen for Each Class Required

A §8 affidavit or declaration must include a specimen showing how the mark is in use in commerce for each class in the registration, unless excusable nonuse is claimed.  15 U.S.C. §1058(b); 37 C.F.R §2.161(a)(7). When requested by the USPTO, additional specimens must be provided. 37 C.F.R §2.161(a)(7).

The specimen must show use of the mark within the time period specified in §8 of the Act. If the specimen does not show use of the mark within the time period specified in §8, it is unacceptable to show current use of the mark in commerce. An affidavit or declaration that does not include a specimen that shows current use of the mark in commerce is deficient. See 15 U.S.C §1058(b).

See TMEP §904.03-904.04(c) regarding trademark specimens, §1301.04-1301.04(j) regarding service mark specimens, §1303.01(a)(i)(C) regarding specimens for collective trademarks and collective service marks, §1304.02(a)(i)(C) regarding specimens for collective membership marks, and §1306.02(a)(i)(B) regarding specimens for certification marks.

The specimen must show use of essentially the same mark as the mark shown in the registration, and must show the mark as actually used in commerce on or in connection with the goods/services/classes listed in the registration. 37 C.F.R §2.56(a). A specimen that shows use of a materially different mark (see TMEP §1604.13), or shows use of the mark on other goods/services/classes, is unacceptable.  An affidavit or declaration that does not include an acceptable specimen for each class is deficient.   See 37 C.F.R §2.161(a)(7).

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

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/services/classes during the relevant period specified in §8 of the Act.  See 37 C.F.R. §2.164. See TMEP §1604.12(c) regarding substitute specimens.

The USPTO will not return specimens.

See TMEP §904.02(a) and §1604.12(b) regarding electronically filed specimens and §904.02(b) regarding permitted paper-filed specimens.

1604.12(b)    Specimen Submission Issues

Under 37 C.F.R §2.56(d), the specimen must generally be submitted through TEAS in a file format that is designated acceptable by the USPTO. See TMEP §904.02(a) for more information regarding electronically filed specimens.

Sometimes, no visible specimen is in the record due to a technical problem during submission of the affidavit or declaration.  In this situation, the Post Registration staff should first send an email to the TEAS mailbox to ask whether the problem can be fixed by uploading the file again.  If it cannot, the Post Registration staff must ask the owner to submit:  (1) the specimen (or an exact copy of the specimen) that was attached to the original electronically filed affidavit or declaration; and (2) a statement by the person who transmitted the affidavit or declaration to the USPTO that the specimen being submitted is a true copy of the specimen submitted with the electronically filed affidavit or declaration.  This statement does not have to be verified.  Alternatively, the owner may submit a new specimen, together with an affidavit or declaration that the substitute specimen was in use in commerce on or in connection with the goods/services during the relevant period specified in §8 of the Act.  No deficiency surcharge is required.  See TMEP §1604.12(c) regarding the requirements for an affidavit or declaration supporting use of substitute specimens.

1604.12(c)    Substitute Specimens

If a specimen for any class is omitted or is deficient, the owner must file 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, 15 U.S.C. §1058, as follows:

  • (1) If the §8 affidavit or declaration was filed during the sixth year after the date of registration or publication under §12(c) of the Act, 15 U.S.C. §1062(c), the affidavit or declaration supporting use of the substitute specimen must state that the substitute specimen was in use in commerce before the expiration of the sixth year after the date of registration or publication under §12(c), if accurate; or
  • (2) If the §8 affidavit or declaration was filed within one year before the end of any ten-year period after the date of registration, the affidavit or declaration supporting use of the substitute specimen must state that the substitute specimen was in use in commerce within one year before the end of the ten-year period after the date of registration, if accurate; or
  • (3) If the §8 affidavit or declaration was filed during the grace period, the affidavit or declaration supporting use of the substitute specimen must state that the substitute specimen was in use in commerce before the expiration of the grace period, if accurate.

If the §8 affidavit or declaration was filed during the relevant period specified in §8(a) of the Act (i.e., during the sixth year after the date of registration or publication under §12(c) of the Trademark Act, or within one year before the end of any ten-year period after the date of registration), the substitute specimen may be filed before expiration of the relevant period for no fee, or after expiration of the relevant period with the deficiency surcharge required under §8(c) of the Act.  If the §8 affidavit or declaration was filed during the grace period, the substitute specimen may be filed before expiration of the grace period for no fee, or after expiration of the grace period with the deficiency surcharge.  See TMEP §1604.04 regarding the deadlines for filing §8 affidavits or declarations, and §§1604.17-1604.17(c) for information about the procedures, deadlines, and surcharge for correcting deficiencies.

While a substitute specimen and supporting affidavit or declaration may be filed after the expiration of the period specified in §8 of the Act, the supporting affidavit or declaration must attest to use of the specimen within the time period specified in §8 of the Act.  Therefore, if the affidavit or declaration supporting the substitute specimen does not state that the specimen was in use in commerce prior to the end of the relevant period specified in §8 of the Act, the USPTO will not accept the affidavit or declaration, and the registration will be cancelled as to any class for which no proper specimen was submitted.

See 37 C.F.R. §2.193(e)(1)  and TMEP §611.03(a) regarding the proper person to sign an affidavit or declaration.