904.09 Affidavit Supporting Substitute Specimens
If the specimen is unacceptable, the examining attorney will require 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 is in use in commerce. 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 is in use in commerce.
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 TMEP §§806.03 et seq. regarding amendments to the basis.
In an application under §1(b) of the Act, a substitute or additional specimen filed after an amendment to allege use under §1(c) of the Act must be supported by an affidavit or declaration under 37 C.F.R. 2.20 stating that applicant used the substitute specimen in commerce on or in connection with the goods/services prior to filing the amendment to allege use. 37 C.F.R. 2.59(b)(1). When a substitute specimen is filed after a statement of use under §1(d) of the Act, the applicant must verify that the substitute or additional specimen was in use in commerce before the expiration of the deadline for filing a statement of use (i.e., within six months of the mailing 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 amend the dates of use with a proper affidavit or declaration under 37 C.F.R. 2.20. See 37 C.F.R. 2.71(c); TMEP §903.05.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. Similarly, if the applicant submits a specimen that is temporary in nature (see TMEP §904.04(a)) , no verification is necessary if the applicant submits a more permanent specimen.