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

A §1(a) application for registration or an allegation of use submitted in a §1(b) application for a trademark or service mark must include one specimen per class, showing the applied-for mark as actually used in commerce on or in connection with the goods or services identified. 15 U.S.C. §§1051(a)(1), (c), (d)(1), 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a)-(b), 2.76(b)(2), 2.88(b)(2).  Initially, the examining attorney must review the specimen to determine whether (1) the applied-for mark appears on the specimen, (2) the specimen shows use for the specific goods/services identified, and (3) the specimen otherwise shows the applied-for mark in actual "use in commerce."

The following non-exhaustive list reflects examples of "use-in-commerce" 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 a printer’s proof of an advertisement for services;
  • The specimen is a digitally created/altered image or mockup of the goods;
  • The specimen is unreadable/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 indicate that registration is refused because the applicant has not provided evidence of use of the applied-for mark in commerce. The statutory bases for refusal are §1 and §45 of the Trademark Act, 15 U.S.C. §§1051, 1127. The examining attorney must also require the applicant to submit a substitute specimen and, if necessary, a supporting affidavit or declaration under 37 C.F.R. §2.20.   See 37 C.F.R. §2.59. If the refusal is made because the specimen is illegible, the applicant may respond by submitting a true copy of the originally submitted specimen that is clear and legible, with a statement by the person who transmitted it that it is a true copy of the specimen that was originally submitted. TMEP §904.02(a); see TMEP §904.02(b).

This specimen refusal, based on an applicant’s not providing the required evidence of use of the applied-for mark in commerce, also applies to specimens for collective and certification mark applications. A §1(a) application for registration or an allegation of use for a collective trademark or collective service mark must include one specimen per class showing how a member uses the mark on the member's goods or in the sale of the services, including use in the performance or rendering of the services, or advertising of the member's services. A §1(a) application for registration or an allegation of use for a collective membership mark must include one specimen per class showing use by members to indicate membership in the collective organization. A §1(a) application for registration or an allegation of use for a certification mark must include one specimen per class showing how a person other than the owner uses the mark to reflect certification of regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of that person’s goods or services; or that members of a union or other organization performed the work or labor on the goods or services. 15 U.S.C. §§1051(a)(1),  (c), (d)(1), 1054, 1127; 37 C.F.R. §§2.44(a)(4)(i)(C), 2.45(a)(4)(i)(E), 2.56(a), (b)(3)-(b)(5), 2.76(b)(2), 2.88(b)(2).

If the specimen submitted does not show the applied-for mark in actual use in commerce, for the identified goods or services, the examining attorney must refuse registration because the applicant has not provided evidence of use of the applied-for mark in commerce. The statutory bases for refusal are §1 and §45 of the Trademark Act, 15 U.S.C. §§1051,  1127. The examining attorney must also require the applicant to submit a substitute specimen and, if necessary, a supporting affidavit or declaration under 37 C.F.R. §2.20. See 37 C.F.R. §2.59. If the refusal is made because the specimen is illegible, the applicant may respond by submitting a true, unaltered copy of the originally submitted specimen that is clear and legible, with a statement by the person who transmitted it that it is a true copy of the specimen that was originally submitted. TMEP §904.02(a); see TMEP §904.02(b).

For more information regarding specimens for collective trademarks and collective service marks see TMEP §1303.01(a)(i)(C), for collective membership marks see §1304.02(a)(i)(C), and for certification marks see §1306.02(a)(i)(B), §1306.04(c)-(d).

904.07(a)(i)    Action After Submission of Substitute Specimen

If the applicant responds to the Office action refusing registration by submitting a substitute specimen that does not show use of the mark in commerce for the same or a different "use-in-commerce" reason, such as the examples listed above, the examining attorney must issue a final refusal because the substitute specimen does not present a new issue. For example, if the original specimen was a photocopy of the drawing, and the applicant submits, in a response to the refusal, a substitute specimen that comprises advertising for its goods, this does not present a new issue. However, if the applicant responds to the refusal by submitting a substitute specimen that fails to show the applied-for mark functioning as a trademark or service mark (e.g., shows the mark is merely ornamental), this presents a new issue that requires issuance of a new nonfinal Office action. See TMEP §904.07(b) for a contrasting list of substantive reasons, relating to failure to function as a mark, that might present a new issue. Therefore, the examining attorney must issue a new refusal as to the substitute specimen, and must maintain the prior refusal as to the original specimen and indicate that the substitute specimen did not obviate the initial refusal.

If the applicant responds to the "use-in-commerce" refusal 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 commerce, 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 must 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.

See TMEP §714.05 regarding new issues requiring issuance of nonfinal action.