BitLaw

904.07(a)    Whether the Specimen Shows the Mark Used in Commerce

A §1(a) application for registration or an allegation of use submitted in a §1(b) application for a trademark or service mark must include one specimen per class, showing the applied-for mark in use in commerce on or in connection with the goods, or in the sale or advertising of the services. 15 U.S.C. §§1051(a)(1), (c), (d)(1), 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a)-(b)(2), 2.76(b)(2), 2.88(b)(2).  Initially, the examining attorney must review the specimen to determine whether the applied-for mark appears on the specimen, the specimen shows use for the specific goods/services identified, and the specimen otherwise shows the applied-for mark in "use in commerce."

The following non-exhaustive list reflects examples of "use-in-commerce" problems that may be raised on initial review of specimens:

• No specimen is submitted;
• The applied-for mark does not appear on the specimen;
• The specimen does not show use of the applied-for mark on or in connection with any of the relevant goods or in the sale or advertising of the services;
• The specimen is a printer’s proof of an advertisement for services;
• The specimen is a digitally created or altered image of the goods;
• The specimen is altered/mutilated/unprintable or illegible;
• The specimen is merely advertising material for goods;
• The specimen is merely a picture or drawing of the mark;
• The specimen is a photocopy of the drawing;
• The specimen is an electronic display associated with the goods (e.g., an online catalog, or web page display for goods), and fails to include ordering information or pricing;
• The specimen is a non-electronic point of sale display and fails to show use of the mark as a "display associated with the goods."

In an Office action addressing such specimen issues, the examining attorney must indicate that registration is refused because the applicant has not provided evidence of use of the applied-for mark in commerce. The statutory bases for refusal are §§1 and 45 of the Trademark Act, 15 U.S.C. §§1051, 1127. The examining attorney must also require the applicant to submit a substitute specimen and, if necessary, a supporting affidavit or declaration under 37 C.F.R. §2.20. See 37 C.F.R. §2.59. If the refusal is made because the specimen is altered, mutilated, or illegible, the applicant may respond by submitting a true, unaltered copy of the originally submitted specimen that is clear and readable, with a statement by the person who transmitted it that it is a true copy of the specimen that was originally submitted. TMEP §904.02(a); see TMEP §904.02(b).

This specimen refusal, based on an applicant’s not providing the required evidence of use of the applied-for mark in commerce, also applies to specimens for collective and certification mark applications. A §1(a) application for registration or an allegation of use for a collective or certification mark must include one specimen per class, showing the applied-for mark in use in commerce on or in connection with an applicant’s member’s or authorized user’s goods or in the sale or advertising of the services by an applicant’s member or authorized user, for a collective trademark, collective service mark, or certification mark specimen, or to indicate membership in a collective membership organization, for a collective membership mark specimen. 15 U.S.C. §§1051(a)(1), (c), (d)(1), 1054, 1127; 37 C.F.R. §§2.44(a)(4)(i)(C), 2.45(a)(4)(i)(E), 2.56(a), (b)(3)-(b)(5), 2.76(b)(2), 2.88(b)(2). If the specimen submitted does not show the applied-for mark in use in commerce, the examining attorney must refuse registration because the applicant has not provided evidence of use of the applied-for mark in commerce. The statutory bases for refusal are §§1, 4, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1127. The examining attorney must also require the applicant to submit a substitute specimen and, if necessary, a supporting affidavit or declaration under 37 C.F.R. §2.20. See 37 C.F.R. §2.59. If the refusal is made because the specimen is altered, mutilated, or illegible, the applicant may respond by submitting a true, unaltered copy of the originally submitted specimen that is clear and readable, with a statement by the person who transmitted it that it is a true copy of the specimen that was originally submitted. TMEP §904.02(a); see TMEP §904.02(b).

For more information regarding specimens for collective trademarks and collective service marks see TMEP §1303.01(a)(i)(C), for collective membership marks see TMEP §1304.02(a)(i)(C), and for certification marks see TMEP §§1306.02(a)(i)(B), 1306.04(c)-(d).