T.M.E.P. § 904.04
Material Appropriate as Specimens for Trademarks

Executive summary:

This document contains one section of the Trademark Manual of Examining Procedure (the "TMEP"), Fourth Edition (April 2005). This page was last updated in June 2007. You may return to one either the section index, or to the key word index. If you wish to search the TMEP, simply use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the TMEP in the pop-up list.

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904.04 Material Appropriate as Specimens for Trademarks

For a trademark application under §1(a) of the Trademark Act or an amendment to allege use or statement of use in an application under §1(b) of the Act, the specimen must show the mark as used on or in connection with the goods in commerce. A trademark specimen should be a label, tag, or container for the goods, or a display associated with the goods. 37 C.F.R. 2.56(b)(1). A photocopy or other reproduction of a specimen of the mark as actually used on or in connection with the goods is acceptable. 37 C.F.R. 2.56(c).

The Office may accept another document related to the goods or the sale of the goods when it is not possible to place the mark on the goods, packaging, or displays associated with the goods. 15 U.S.C. 1127 (definition of "use in commerce"); 37 C.F.R. 2.56(b)(1). This provision is not intended as a general alternative to submitting labels, tags, containers or displays associated with the goods; it applies only to situations when the nature of the goods makes use on these items impracticable. A mere assertion of impracticability may not suffice to establish that such use is impracticable; rather, the record must indicate that the goods are in fact of such a nature. For example, it may be impracticable to place the mark on the goods or packaging for the goods if the goods are natural gas, grain that is sold in bulk, or chemicals that are transported only in tanker cars.

A photocopy of the drawing required by 37 C.F.R. 2.51 is not a proper specimen. 37 C.F.R. 2.56(c). Similarly, the specimen may not be a "picture" of the mark, such as an artist's drawing or a printer's proof that merely illustrates what the mark looks like and is not actually used on or in connection with the goods in commerce.

See TMEP §§1301.04 et seq. regarding service mark specimens, TMEP §1304.09(c) regarding collective membership mark specimens, TMEP §1303.02(b) regarding collective mark specimens, and TMEP §1306.06(c) regarding certification mark specimens.

904.04(a) Labels and Tags

In most cases, where the trademark is applied to the goods or the containers for the goods by means of labels, a label is an acceptable specimen.

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. Electronic Communications, Inc. v. Electronic Components for Industry Co., 443 F.2d 487, 170 USPQ 118 (8th Cir. 1971), cert. denied 404 U.S. 833 (1971); In re A.S. Beck Shoe Corp., 161 USPQ 168 (TTAB 1969). They are not acceptable if the mark as shown is merely used as a trade name and not as a trademark. An example of this is the use of the term solely as a return address. Bookbinder's Sea Food House, Inc. v. Bookbinder's Restaurant, Inc., 118 USPQ 318 (Comm'r Pats. 1958); I. & B. Cohen Bomzon & Co., Inc. v. Biltmore Industries, Inc., 22 USPQ 257 (Comm'r Pats. 1934). See TMEP §1202.01 regarding trade name refusals.

In connection with labels whose appearance suggests that they are only for temporary use, the examining attorney may consider it necessary to make further inquiry under 37 C.F.R. 2.61(b) in order to properly examine the application. A response to the inquiry may include additional specimens if labels of a more permanent nature have by that time been adopted. House of Worsted-Tex, Inc. v. Deering Milliken & Co., Inc., 102 USPQ 446 (Comm'r Pats. 1954), aff'd, 233 F.2d 333, 110 USPQ 44 (C.C.P.A. 1956).

904.04(b) Stampings

Stamping a trademark on the goods, on the container, or on tags or labels attached to the goods or containers, is a proper method of trademark affixation. See In re Crucible Steel Co. of America, 150 USPQ 757 (TTAB 1966). The trademark may be imprinted in the body of the goods, as with metal stamping; it may be applied by a rubber stamp; or it may be inked on by using a stencil or template.

When a trademark is used in this manner, facsimiles comprising sheets of paper or other materials on which impressions of the trademark are stamped or stencilled are normally acceptable as specimens (see TMEP §904.08 regarding facsimile specimens).

When the specimen consists of a stamp on paper, the applicant must explain the nature of the specimen and how it is used.

904.04(c) Commercial Packaging

The terminology "applied to the containers for the goods" means applied to any type of commercial packaging that is normal for the particular goods as they move in trade. Thus, a showing of the trademark on the normal commercial package for the particular goods is an acceptable specimen. For example, gasoline pumps are normal containers or "packaging" for gasoline.

A specimen showing use of the trademark on a vehicle in which the goods are marketed to the relevant purchasers may constitute use of the mark on a container for the goods, if this is the normal mode of use of a mark for the particular goods. In re E.A. Miller & Sons Packing Co., Inc., 225 USPQ 592 (TTAB 1985). But see In re Lyndale Farm, 186 F.2d 723, 88 USPQ 377 (C.C.P.A. 1951).

904.04(d) Specimens for Trademarks Identifying Computer Programs, Movies or Video Tapes

The computer program, video tape, and movie industries have adopted the practice of applying trademarks that are visible only when the goods, i.e., programs or movies, are displayed on a screen (perhaps, for example, on the first several frames of a movie).

An acceptable specimen might be a photograph of a display screen projecting the identifying trademark of a computer program, or a photograph of a frame(s) of a movie or video tape bearing the mark. It is not necessary that purchasers see the mark prior to purchasing the goods, so long as the mark is applied to the goods or their containers, or to a display associated with the goods, and the goods are sold or transported in commerce. In re Brown Jordan Co., 219 USPQ 375 (TTAB 1983) (stamping the mark after purchase of the goods, on a tag attached to the goods that are later transported in commerce, held sufficient).

For downloadable computer software, an applicant may submit a specimen that shows use of the mark on an Internet website. Such a specimen is acceptable only if it provides sufficient information to enable the user to download the software from the website. If the website simply advertises the software without providing a way to download it, the specimen is unacceptable. See TMEP §904.06(b) regarding electronic displays as specimens for trademarks.