TMEP 1109.09(b): Specimens

This is the October 2015 Edition of the TMEP

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1109.09(b)    Specimens

The examining attorney must examine the specimens to confirm that they show use of the subject matter as a mark on or in connection with the goods/services identified in the statement of use. See TMEP §§1202.1202.17(e)(vi) regarding use of subject matter as a trademark, and TMEP§§1301.02–1301.02(f) regarding use of matter as a service mark. The examining attorney must also determine whether the mark as used on the specimens is a substantially exact representation of the mark on the drawing. See TMEP §§807.12(a)–807.12(a)(iii), 1109.12. The examining attorney must issue requirements and refusals, as appropriate, based on the examination of the specimens, subject to the same standards that govern the examination of specimens in a §1(a) application. TMEP §§904–904.07(b).

The submission of at least one specimen with a statement of use is a minimum filing requirement. 15 U.S.C. §1051(d)(1); 37 C.F.R. §2.88(e)(2); In re Campbell, 33 USPQ2d 1055 (Comm’r Pats. 1993). If the examining attorney determines, before taking an action regarding the statement of use, that no specimen was submitted with the statement of use, the examining attorney should refer the application to the ITU/Divisional Unit for appropriate action.

In a multiple-class application, the applicant must submit one specimen for each class of goods/services in the statement of use before the statement of use may be approved. 37 C.F.R. §§2.86(b), 2.88(b)(2). However, only one specimen for one class is needed to comply with the minimum filing requirements. If at least one specimen is filed within the time permitted for filing the statement of use, the applicant may submit specimen(s) for the other class(es) after the expiration of the statutory filing period, if the applicant verifies that the additional specimen(s) was in use in commerce before the expiration of the deadline for filing the statement of use. 37 C.F.R. §2.59(b).

If the applicant files at least one specimen with the statement of use, but the specimen is unacceptable, the applicant may provide a substitute specimen after the expiration of the time permitted for filing the statement of use, provided that the applicant verifies that the substitute specimen was in use in commerce before the expiration of the deadline for filing the statement of use. 37 C.F.R. §2.59(b). If the applicant does not provide an acceptable specimen that was in use in commerce before the expiration of the deadline, the examining attorney must refuse registration because the applicant failed to make use of the mark within the time permitted, and inform the applicant that the application is deemed abandoned. The examining attorney must issue a regular Office action with a six-month response clause. TMEP §1109.16(b). See TMEP §1108.03 regarding the filing of an “insurance” request for an extension of time to file a statement of use in order to gain additional time to make proper use of the mark.

If the dates of first use change as a result of the submission of a new specimen, the applicant must amend the dates of use in the statement of use. The amendment must be supported by an affidavit or declaration. 37 C.F.R. §2.71(c); TMEP §1109.09(a).

If the statement of use is filed electronically using TEAS, the applicant must submit a digitized image of the specimen in.jpg or.pdf format. 37 C.F.R. §2.56(d)(4). See TMEP §904.02(a) for additional information about electronically filed specimens.