When Your Trademark Specimen Doesn't Show Use: How to Fix this Common Mistake - Creative Law Center

When Your Trademark Specimen Doesn’t Show Use: How to Fix this Common Mistake

One of the most common mistakes that can get the application for registration of your trademark refused is submitting a trademark specimen, or sample of your mark, that doesn't show its use as a trademark.

Before the USPTO (United States Patent and Trademark Office), will issue a federal registration for a trademark, they want to see an example of how the mark is used. That example is called the "specimen" in the application process.

"Use as a trademark" is the operative phrase when it comes to submitting a valid specimen. Not any use, or depiction, of your mark will satisfy the Trademark Office.

Giving the USPTO the wrong type of trademark specimen or a specimen that doesn't show use as a trademark, is a mistake that can easily be avoided. If your application has already been filed and is the subject of an Examiner's Office Action, problems with a specimen can easily be fixed. Usually.

This post explains:

  • what makes a trademark protectable
  • what a trademark looks like
  • what "use as a trademark" means
  • trademark specimens that are unacceptable to the USPTO
  • trademark specimens that are acceptable to the USPTO

Once you understand these fundamentals, you will be better positioned to avoid making the common mistake of submitting the wrong or incorrect trademark specimen in your application.

Three Parts of a Protectable Trademark

Almost anything can gain protection as a trademark if it functions as one, including words, logos, stylized words, composite word/design marks, images, product packaging, décor, three-dimensional product features, scents, sounds, colors, or motions. 

Although this post is focused on word marks, whatever it is you decide to use as your trademark, to be protectable, it needs three elements:

  • distinctiveness
  • use in commerce, and
  • use as a mark

Distinctiveness goes to the strength of the mark. There's a spectrum of distinctiveness – generic marks are not protected at all. Fanciful marks have the strongest protection.

Distinctiveness is only one part of the equation when it comes to protectability of a trademark. The most distinctive mark in the world is not protectable unless it is used in commerce and as a trademark.

"Use in commerce" means that goods or services were sold under the mark in a type of commerce, business, or industry that may be regulated by the U.S. Congress. Congress can regulate just about anything (if they put their minds to it). "Use in commerce" is not a particularly big hurdle. As a practical matter, "use in commerce" means making sales with the trademark displayed on the product, packaging, or in materials that support a sale.

"Use as a mark" means the trademark must be used to identify the source of goods or services and distinguish that source from other sources.

That's what a trademark is – a source identifier. The purpose of a trademark is to identify the source of a product or service. I may say this more than once, because it's important.

Think of a cattle brand. The brand on cattle tells you who the owner is, so you better not rustle him. That is exactly what a trademark does. It tells you whose product or service you're looking at and may buy.

Branded Longhorn Cattle on a Cattle Ranch

Branded Longhorn Cattle on a Cattle Ranch

"Use as a mark" is the concept we are going to explore in this post.

What Does a Trademark Look Like?

Common design conventions, ways that trademarks are commonly depicted, help trademarks function as source identifiers. Incorporating these conventions in your mark and how it is displayed is the first step to getting the "use as a trademark" piece of the protectability equation right.

Trademarks are all about consumer perception. After all, the purpose of trademark law is to protect a brand against the likelihood of consumer confusion from some other brand. The idea is that a consumer can recognize the source of one product as distinct from another source with a quick glance at the trademark.

Classic trademark indicators, visual cues, signal to the consumer that they are looking at a trademark, a source identifier. These indicators, conventions that designers and brand developers use, set the mark apart not only from the rest of the packaging or copy that surrounds it, but also from brand competitors.

Classic indicators of a trademark include:

  • large, clear, prominent letters
  • specialized fonts
  • italics
  • color
  • frames
  • prominent position on the label or packaging
  • use of the "R" in a circle, TM or SM

When a consumer looks at the packaging for Coca-Cola, for example, they can identify the trademark by the large, bold, stylized font. The smaller text is easily understood as descriptive or informational and not part of the trademark.

trademark specimen example coca-cola packaging

Click to enlarge.

These visual cues tell consumers about the source of the product.

In the Lego example, the mark is in a bold, stylized font. The word is set in a red frame, a highly contrasting color. The letters are outlined in yellow which makes the word "pop" against the red background. The trademark is placed in a prominent position on the package in the top left corner and uses the "R" in a circle.

The second mark on the package, Star Wars, also uses a bold, stylized font and is depicted with a "TM" just beneath it.

trademark specimen example Lego packaging

Click to enlarge.

The "TM'' (usually in superscript, but in this case subscript) is used to tell the world that trademark rights are being claimed but there is no federal registration, yet. When a trademark application clears all the hurdles and the trademark registration issues, it's time to use an "R" in a circle next to the mark. An "SM" is used for unregistered service marks.

Both of these examples would make good trademark specimens that could be submitted with an application for trademark registration.

What is Trademark Use?

While "distinctiveness" is what the mark is, "trademark use" is what the mark does. Again, the basic function of a trademark is to identify source.

That's not to say that a consumer needs to be able to identify the precise company that makes the goods or offers the services. After all, trademarks aren't always the name of the company.

For instance, the packaging for Dove soap doesn't tell you who makes it. There's no indication that the trademark is owned by Chesebrough-Pond's Inc. which is, in turn, owned by Unilever. 

That's not what a trademark has to tell you. It's not about the specific source, it's about a consistent source. Even if that source is unknown.

Dove has been a registered trademark since at least 1945. Dove serves as a trademark for soap because we, as consumers, understand it as one.

trademark specimen Dove bar soap packaging

Click to enlarge.

When a word functions primarily as something else – decoration, a domain name, a phone number, a hashtag  – that is not, by itself, trademark use. 

Words that have other functions can become trademarks when the classic visual cues are incorporated into the design in order to signal source to the consumer.

In the 1-800-FLOWERS.com example, a word that functions as a phone number and a domain name becomes a trademark through the use of a bold font, contrasting colors, prominent placement on the package, and use of "SM" at the base of the mark.

trademark specimen 1800flowers

What Types of Trademark Specimens are Unacceptable?

When completing the application for federal registration of your trademark, the specimen you submit must show trademark use. If it doesn't, the USPTO will refuse registration. Common reasons for refusal are when the trademark specimen:

  • does not show use of the mark with any of the relevant goods or services
  • is a printer’s proof of an advertisement for services
  • is a digitally created or altered image of the goods and not an actual image of the goods or packaging
  •  is merely a picture or drawing of the trademark
  • is a webpage that does not include ordering or purchasing information
  • is a webpage that does not include the URL or date accessed
  • is material used only to conduct the daily business of selling goods (e.g., packing slips, business letterhead, order forms, waybills, and bills of lading)
  • depicts the trademark in a way that is only ornamental

The trademark specimen has to be what the consumer sees in connection with the offer to sell the goods or services. That's trademark use.  And that's why material you use after you make a sale, like packing slips and invoices, is not considered a good specimen. 

What Makes a Good Trademark Specimen?

Here are some examples of trademark specimens that the Trademark Office will happily accept in support of your application for registration.

For products:

  • photographs that show the mark on a tag or label affixed to the goods
  • hangtags or labels with the mark and the generic name of the actual goods on the tag or label
  • screenshots of webpages with the URL and access or print date that show the mark being used in connection with the goods at their point of sale
  • photographs of the mark on packaging where the goods are visible through the packaging
  • photographs of the mark on packaging where the packaging identifies the generic name of the goods included in the package.

Book Series Example

Book titles cannot be protected by copyright or trademark, but trademarks for a book series can be protected. Proper placement for a trademark when planning a book series is on the title page, the back cover adjacent to the price ad ISBN number, and on the spine. There must be at least two books in the series before the Trademark Office will issue a trademark registration, so a little advance planning is needed.

Three images showing use of trademark on a book.

Click to enlarge.

Clothing Example

Take a look at the trademark use on the Polo shirt below. The trademark appears on the neck seam label and on the hang tag. Either of these uses would make a good specimen for the Trademark Office.

The word "Polo" that appears in decorative stitching on the front of the shirt itself would not be considered an acceptable specimen of use. The word is used as ornament, not in a trademark sense.

three close-up images of a Polo t-shirt showing the hangtag, label and ornammentation

Click to enlarge.

For services:

  • copies of brochures or flyers where the mark is used in advertising the services
  • photographs of the mark on retail store or restaurant signage
  • photographs of the mark on service vehicles
  • screenshots of webpages with the URL and access or print date where the mark is used in the actual sale or advertising of the services

Coaching Services Example

Applications for registration of service marks often use screen shots of websites as specimens. The trademark specimen below for coaching services has all the elements needed for an acceptable specimen: the trademark looks like a trademark; the trademark is immediately adjacent to purchasing information (the "Join Now" button); and the screenshot shows the URL and the date and time the image was created.

Coaching services trademark specimen annotated

Click to enlarge.

Avoid the Mistake of Submitting the Wrong Trademark Specimen

When a buyer looks at your trademark, what do they see?

Are you using visual cues to tell the consumer that your mark is a source identifier?

Does the specimen you're sending to the Trademark Office show trademark use?

Any questions? Drop them in the comments.

When Your Trademark Specimen Doesn\'t Show Use: How to Fix this Common Mistake

About the Author

Kathryn Goldman helps small business people, writers, artists, and creative professionals make a living from their creative work by teaching them how to protect and enforce their rights. She is an attorney who writes these posts to help you be more thoughtful about intellectual property and the law as you build your business, write your stories, and create your art.

  • Brenda says:

    Hi Kathryn,
    So, it appears that the Mark needs to be used in Commerce before the company can submit an application for Trademark. Is this correct?
    Can a company use the TM designation even before the process of submitting an application for Trademark has not begun?
    Thank you!

    • Brenda,

      A company can use the TM designation before submitting an application for trademark registration, even if an application is never submitted. The TM tells the world that the company is claiming common law trademark rights in the Mark. The nature of common law trademark rights is the subject for another day.

      A company (or person) does not need to use the Mark in commerce before an application for registration is filed. There are two types of applications — one in which the Mark is in use (a use application), and one in which the applicant intends to use the mark. The Intent to Use (an ITU) application secures the applicant’s priority position while they make plans to launch their product or service.

      The Mark needs to be used in commerce before a valid specimen can be filed with the Trademark Office. Specimens are filed as part of a use application. With an Intent to Use application, specimens are filed when the product or service is launched — up to three years after filing the ITU.

  • >
    Share
    Tweet
    Share
    Pin