TMEP 904.05: Affidavit Supporting Substitute Specimens

This is the October 2015 Edition of the TMEP

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904.05    Affidavit Supporting Substitute Specimens

If the examining attorney determines that the specimen is not acceptable, the examining attorney will require the applicant to submit a substitute specimen. Generally, when submitting a substitute specimen, the applicant must include an affidavit or declaration under 37 C.F.R. §2.20 verifying that the substitute specimen was in use in commerce at least as early as the filing date of the application. 37 C.F.R. §2.59(a). Similarly, when submitting an additional specimen in support of a multiple-class application that is not identical to the specimen originally filed, the applicant must include an affidavit or declaration under 37 C.F.R. §2.20 verifying that the new specimen was in use in commerce as of the pertinent date indicated in this section. See C.F.R. §§2.59, 2.86(a)(3), (b)(3). The affidavit or declaration must be signed by someone properly authorized to verify facts on behalf of the applicant under 37 C.F.R. §2.193(e)(1). 37 C.F.R. §2.59(a).

In an application under §1(a) of the Trademark Act, the affidavit or declaration must state that the substitute or additional specimen was in use in commerce at least as early as the application filing date. 37 C.F.R. §2.59(a). If the applicant cannot provide an acceptable substitute specimen, supported by an affidavit or declaration of use in commerce as of the filing date of the application, the applicant may amend the basis to §1(b). See 37 C.F.R. §2.35(b)(1). See TMEP §806.03 regarding amendments to the basis.

In an application under §1(b) of the Act, an applicant who files a substitute or additional specimen after an amendment to allege use under §1(c) of the Act must include an affidavit or declaration under 37 C.F.R. §2.20 stating that the substitute or additional specimen was in use in commerce prior to filing the amendment to allege use. 37 C.F.R. §2.59(b)(1). An applicant who files a substitute specimen after a statement of use under §1(d) of the Act must verify that the substitute or additional specimen was in use in commerce before the expiration of the deadline for filing the statement of use (i.e., within six months of the issuance date of the notice of allowance or before the expiration of an extension of time for filing a statement of use). 37 C.F.R. §2.59(b)(2).

If the dates of use change as the result of the submission of new specimen(s), the applicant must file an amendment of the dates of use, supported by an affidavit or declaration under 37 C.F.R. §2.20. See 37 C.F.R. §2.71(c); TMEP §903.04.

In some situations, however, an affidavit or declaration of use of substitute specimens is not necessary. For instance, if the specimen originally filed is cut from a larger object, it is not necessary to provide an affidavit or declaration when a sample (or a photograph) of the complete object is submitted to corroborate the original specimen. In these circumstances, the additional specimen is supplemental, and the examining attorney may consider the original specimens to have been satisfactory.