Specimen of Use
One of the best ways for a business owner to protect their goods and services from copycats is through federal trademark and service mark registration. Trademarks provide a way for small businesses, startups, or entrepreneurs to protect short phrases, designs, words, and symbols. These are marks. When it is for a product or good, it is a trademark. If it is for services, then it is a service mark. These marks identify and distinguish the source of goods or services.
Trademark law has more protection when there is federal trademark registration. This article dives into how to get this protection, frequently asked questions (FAQs), and acceptable specimens of use when filing your application.
USPTO Registered Trademark Benefits
Registering with the United States Patent and Trademark Office (USPTO) is no longer a requirement to get trademark protection. The use of the mark in commerce is enough for some protection. One use is posting the product or service on a webpage.
Federal registration for a mark needs the approval of a trademark application. The application process is through the mail or at uspto.gov. Trademark registration has unique benefits that the use of the mark alone does not have. For example:
- The legal presumption that the registrant is the U.S. trademark owner. This means they have the exclusive legal right to use the mark.
- Ability to file for international trademark protection. The Madrid Protocol allows a nationally registered trademark to apply for protection in another country that follows the same protocol.
- Ability to sue in federal court and get an injunction to stop someone from using the mark without permission.
That sounds like some great reasons to register your trademark or service mark. The path to federal trademark registration is not easy, but it is worth it.
Trademark Application Procedure
If you decide to register a trademark with the USPTO, you must follow certain procedures. An examining attorney will review your application and provide feedback through office actions. Office actions are letters.
There are two types of trademark applications:
Which type of application you select depends on if you are using your mark in commerce yet. If you are not, then you will file a 1b application.
General Trademark Application Requirements
A general trademark application will include:
- The name of the applicant, which can be a business, business owner, or individual
- An address and name for communications between the USPTO examining attorney and the applicant
- A drawing of the mark
- The list of the goods and services for which the mark is or will be used
- Nonrefundable filing fee(s)
Failure to include all the required elements of a trademark application will result in the return of the application. You typically receive an office action letting you know what is needed with a time frame of three months to cure it. Your application abandons if you do not respond or provide the appropriate information.
What Is a Specimen of Use?
Some 1a applications require that the applicant submit a specimen of use with the application. A specimen of use is a real-world example of the mark's use on goods or services. The detailed requirements are on the USPTO website.
Trademark Specimen of Use
A real-world example of a specimen of use is an actual object like a T-shirt that bears the mark, not just a photo or drawing of the mark. A person can submit tags, instruction manuals, containers, labels, or packaging materials for goods. You cannot submit advertisements for a trademark for a good or product.
If you submit a webpage as proof, you need to have the full URL, the access date, and the original publication date if known.
Service Mark Specimen of Use
Suppose the mark will be used to identify and distinguish services. In that case, an applicant can provide flyers, advertisements, marketing material, webpages, social media screenshots as long as the service is for sale, and brochures. A business card or letterhead could be an acceptable specimen of use for services (but not for goods) if the card or letterhead displays the mark along with the service(s) offered. Proof of the point of sale should be included as well.
A specimen of use is not required for applications based solely on a foreign application or registration.
How Do I File the Trademark Specimen?
If you choose to file your application electronically through the USPTO's Trademark Electronic Application System (TEAS), you will need to attach an image of your specimen of use. The image you attach should include as much of the advertisement or label as possible so that you can show the context in which the mark is being used.
The acceptable formats for specimen uploads are JPG, PDF, WAV, WMV, WMA, MP3, MPG, or AVI files.
When Do I File the Trademark Specimen?
When you need to file the specimen of use will depend on the type of trademark application you are filing.
- Use applications require the specimen at the time you apply. You need to submit one specimen for each class of goods or services listed in your application.
- Intent-to-use applications do not require the specimen of use when you file. But, you will need to provide a specimen for each class of goods and/or services later. You will file an Allegation of Use, which is a sworn statement that the mark will be used in commerce.
The use of the mark in commerce allows for full trademark law protection. Next, you will get a Notice of Allowance (NOA) from the examining attorney if your mark passes the opposition period.
Before the registration of your mark is complete you must file a Statement of Use (SOA) with the USPTO. You must then show that your mark is being used in commerce within six months of the NOA. You do this by filing a SOU. You must file SOUs for each class of goods or services. SOUs must continue to be filed to keep your federal registration active.
Get Trademark Specimen Legal Help
If you have questions about an acceptable specimen of use or more general questions about trademarks and filing for federal trademark registration, you should contact an experienced trademark attorney in your area.
For more information about this topic, and other types of intellectual property, such as copyrights and U.S. patents, you can visit FindLaw's section on Intellectual Property.
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