904.03(a) Labels and Tags
In most cases, if a trademark is ordinarily applied to the goods or the containers for the goods by means of labels, a label affixed to the goods is an acceptable specimen. However, if a mark is merely informational or incapable of functioning as a mark for some other reason, it would not be seen as an indicator of source, and registration must be refused even if the specimen of record shows what would otherwise be acceptable trademark use, including use on tags or labels affixed to the goods. See TMEP §§1202.04–1202.04(d).
Shipping or mailing labels may be accepted if they are affixed to the goods or to the containers for the goods and if proper trademark usage is shown. In re A.S. Beck Shoe Corp., 161 USPQ 168 (TTAB 1969); Elec. Commc’ns, Inc. v. Elec. Components for Indus. Co., 443 F.2d 487, 170 USPQ 118 (8th Cir. 1971). They are not acceptable if the mark as shown is merely used as a trade name and not as a trademark. An example of such unacceptable usage is use of the term solely as a return address. In re Supply Guys, Inc., 86 USPQ2d 1488 (TTAB 2008); Bookbinder’s Sea Food House, Inc. v. Bookbinder’s Rest., Inc., 118 USPQ 318 (Comm’r Pats. 1958); I. & B. Cohen Bomzon & Co. v. Biltmore Indus., Inc., 22 USPQ 257 (Comm’r Pats. 1934). See TMEP §1202.01 regarding trade name refusals.
Although a photograph of the goods bearing the mark on a label or tag attached to the goods is preferred, a label or tag that is not shown physically attached to the goods may be accepted if, in addition to the mark, it includes information that typically appears on a label or tag in use in commerce for the types of goods, such as net weight, volume, UPC bar codes, lists of contents or ingredients, or other information that is not part of the mark but provides information sufficient to identify the goods.
Labels or tags that appear to be a mockup, illustration, or other rendering are unacceptable and will result in refusal for failure to show the mark in actual use in commerce in connection with the goods. The refusal will be under Sections 1 and 45 (15 U.S.C. §§1051, 1127 ) if submitted before registration, or under Sections 8 or 71 and 45 of the Act (15 U.S.C. §§1058, 1127, 1141k ) if submitted after registration. In addition to the refusal, during the application process the examining attorney must also issue an inquiry under 37 C.F.R. §2.61(b) to clarify the use of the specimen in commerce. TMEP §904.03(a). For example, an inquiry may be appropriate if there is uncertainty as to whether a label is actually placed on the goods as they are sold in commerce or if it includes information atypical of labels for the listed goods. However, nothing prohibits the registration of a mark in an application that contains only "temporary" specimens, provided that the specimens were actually used in commerce. See In re Chica, 84 USPQ2d 1845,1847-48 (TTAB 2007) (finding applicant’s specimen unacceptable not because it was temporary but because it comprised a mere drawing of the goods with an illustration of how the mark may be displayed and not an actual specimen that applicant used in commerce).
See TMEP §904.04(a) regarding digitally created or altered specimens and §904.07(a) regarding "use-in-commerce" issues that may be raised on initial review of specimens.