TMEP 1604.12(a): Specimen for Each Class Required

This is the October 2015 Edition of the TMEP

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1604.12(a)    Specimen for Each Class Required

A §8 affidavit or declaration must include a specimen showing how the mark is in use in commerce for each class in the registration, unless excusable nonuse is claimed. 15 U.S.C. §1058(b); 37 C.F.R. §2.161(g). When requested by the USPTO, additional specimens must be provided. 37 C.F.R. §2.161(g).

See TMEP §§904.03 et seq. regarding trademark specimens, TMEP §§1301.04 et seq. regarding service mark specimens, TMEP §1303.01(a)(i)(C) regarding specimens for collective trademarks and collective service marks, TMEP §1304.02(a)(i)(C) regarding specimens for collective membership marks, and TMEP §1306.02(a)(i)(B) regarding specimens for certification marks..

The specimen must show use of essentially the same mark as the mark shown in the registration, and must be used on or in connection with the goods/services/classes listed in the registration. A specimen that shows use of a materially different mark ( see TMEP §1604.13 ), or shows use of the mark on other goods/services/classes, is unacceptable. An affidavit or declaration that does not include an acceptable specimen for each class is deficient. See 37 C.F.R. §2.161(g).

If a single specimen supports multiple classes, the owner should so indicate, and the Post Registration staff need not require additional copies of the specimen. The Post Registration staff should enter a Note to the File in the record indicating which classes the specimen supports.

Under 37 C.F.R. §2.56(d)(1), the specimen should be flat and no larger than 8½ inches (21.6 cm.) wide by 11.69 inches (29.7 cm.) long. If a specimen exceeds these size requirements, the USPTO will create a digital facsimile of the specimen that meets the requirements of the rule (i.e., is flat and no larger than 8½ inches wide by 11.69 inches long), put it in the record, and destroy the original bulky specimen. 37 C.F.R. §2.56(d)(2). If the copy of the specimen created by the USPTO does not adequately depict the mark, the Post Registration staff will require a substitute specimen that meets the size requirements of the rule, and an affidavit or declaration verifying the use of the substitute specimen.

If the specimen is otherwise deficient, the Post Registration staff will require a substitute specimen, together with an affidavit or declaration that the substitute specimen was in use in commerce on or in connection with the goods/services/classes during the relevant period specified in §8 of the Act. See 37 C.F.R. §2.164. See TMEP §1604.12(c) regarding substitute specimens.

The USPTO will not return specimens filed with a §8 affidavit or declaration.