TMEP 904.02(a): Electronically Filed Specimens

October 2017 Edition of the TMEP

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904.02(a)    Electronically Filed Specimens

In an electronically filed 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 specimen(s) must be in.jpg or.pdf format. 37 C.F.R. §§2.56(d)(4), 2.161(g), 7.37(g).  If the nature of the specimen is unclear, the applicant should describe what it is and how it is used.  See TMEP §904.03(d) regarding electronic and digital media attachments and §904.03(f) regarding specimens for sound marks.

Sometimes, although the application indicates that a specimen is included, the specimen is not visible in the record due to a technical problem that occurred during submission of the application.  In this situation, the examining attorney should first send an e-mail to the TEAS 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.

The USPTO prefers that the specimen, whether a true copy of the original or a substitute, be submitted electronically via the Trademark Electronic Application System ("TEAS").  In TEAS, the Response to Office Action form can be accessed by clicking on the link entitled "Response Forms" at http://www.uspto.gov.