904.02    Physical Form of Specimens

904.02(a)    Electronically Filed Specimens

In an 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 specimens must generally be submitted through the Trademark Electronic Application System (TEAS) in a file format designated as acceptable by the USPTO. See 37 C.F.R. §§2.56(d), 2.161(g), 7.37(g).  See TMEP §904.03(d) regarding specimens submitted in electronic and digital media and §904.03(f) regarding specimens for sound marks. If the nature of the specimen is unclear, the applicant should describe what it is and how it is used.  

Sometimes, although the submission indicates that a specimen is included, the specimen is not visible in the record due to a technical problem that occurred during its submission.  In this situation, the examining attorney should first send an email to the TEAS@uspto.gov 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.

Exceptions to the Requirement to Submit Specimens through TEAS. Specimens must be submitted electronically through TEAS unless:

37 C.F.R. §§2.56(d).

See TMEP §301.02(c) regarding exempt filers under 37 C.F.R. §2.23  and §301.02(e) and §1709 regarding petitions to the Director under 37 C.F.R. §2.147  to accept paper submissions.

904.02(b)    Permitted Paper-Filed Specimens

If a specimen is filed in connection with a permitted paper filing (see TMEP §301.01), the specimen(s) should be flat and no larger than 8½ inches wide by 11 inches long. The USPTO may create a photocopy or other reproduction for the official record and destroy the original.

Reproductions of specimens submitted by applicants (e.g., photographs or photocopies) must show the entire specimen or enough of the specimen that the nature of the specimen, the mark, and the good or service with which the mark is used are identifiable. 37 C.F.R. §2.56(c). The mark and all other pertinent written matter on the submitted specimen 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 reproductions.  It is permissible to show the complete product in one photograph and the written matter in another, so that the written matter will be legible, or to show different views of a product either in a single photograph or in separate photographs.

If a web page printout is submitted as a display associated with the goods, it must include the URL for the web page and the date the page was accessed or printed. Id. Trademark owners can submit the URL and date directly on the specimen web page itself or elsewhere in the document with which the specimen is submitted or in a verified statement under 37 C.F.R §2.20  or 28 U.S.C. §1746 in a later-filed response. This information may not be entered via examiner’s amendment. If the web page printout includes a photograph of the applied-for mark appearing on the goods or on packaging for the goods that would otherwise be acceptable as a specimen of use for goods, it need not include the URL and access or print date.

See TMEP §904.02(c)(ii) regarding specimens for marks comprising color.

If paper filing has not been permitted but an actual physical specimen is necessary for examination, the examining attorney may require an actual physical specimen under 37 C.F.R. §2.56(a)  and §2.61(b). See TMEP §904.03(m) regarding specimens for scent and flavor marks.

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 additional reproductions showing the actual product or container.  Similarly, 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.

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.  In such case, the applicant should submit color photographs of the specimen or other similar reproductions of the specimen in color so that the color is identifiable.

For all applications 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 color is a feature of the mark and 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.