- Do you have your specimen ready first?
First, get your mind out of the gutter
'cause that's not the kind of specimen I'm talking about.
But then come right back here and take a seat
'cause I'm about to tell you some tips
for not messing up your trademark specimen.
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(keyboard clicking)
Hi, everyone, I'm attorney Aiden Durham
with 180 Law Co. in Colorado,
and welcome back to All Up In Yo' Business.
Before we start specimen talk, don't forget
to like, subscribe and share and check the description
for links to additional information and resources
to help you manage how to get a registered trademark
for your business.
You can check out my ALL-INCLUSIVE
trademark registration package or my online DIY course
that teaches you step by step how to prepare for
and apply for a registered trademark with the USPTO.
All right, so whether you are applying
to register a new trademark,
or if you already have a trademark registration
and you need to do some maintenance filings,
one of the key points to both of those things
is submitting an acceptable specimen of use.
If you don't provide an acceptable specimen,
then your trademark registration will either get denied
or rejected, or if it's already registered,
you risk getting it canceled.
A little background on kind of the timing
of when this comes up.
If you're filing a trademark application with the USPTO
on a 1a, current use basis, then you have to submit
the specimen along with the application.
If you're filing on a 1b, intent to use basis,
then you don't submit it with the application
because with intent to use you're saying
you're not using the trademark in commerce yet,
so how would you have a specimen to submit?
Instead, a few months down the line, the USPTO,
the examining attorney, will issue a Notice of Allowance,
and then that Notice of Allowance starts the clock ticking,
and you'll have six months from the date
of the Notice of Allowance to then submit your specimen
along with a statement of use,
or you can request a six-month extension.
Either way, at some point in that process,
you're gonna then have to submit the specimen.
The point of the specimen is to demonstrate and show
to the USPTO, how you're using the trademark
in commerce in connection with the goods and services
that you indicated on the application.
They want to see the context in which the public
is coming across your trademark in the marketplace.
And it needs to show the context of how it's being used
in connection with the sale of the goods and or services
that you indicated on the application.
So you need to make sure it properly demonstrates
use of the trademark
in connection with those goods and services,
and that it otherwise is in line
with the USPTO's requirements for an acceptable specimen.
Otherwise, they're gonna reject it,
or at least, when you're applying for it,
they'll give you an office action saying,
hey, unh, unh, this specimen isn't acceptable.
They'll give you an opportunity or two to correct it.
But ultimately, if you don't give them
what they're looking for, you're out.
So there are a few really common mistakes that come up
when people are trying to submit a specimen
for their trademark application.
The number one common mistake
is that it doesn't show the applied for trademark
with the relevant goods or services.
So this can either mean that the trademark
that you identified on the application and the trademark
as it's appearing on the specimen don't match.
Maybe you submitted a standard character mark,
just plain text, on the application,
but then on the specimen, that text is different,
the words are different.
Or maybe you're trying to register a logo, design,
a design mark, and the application shows one design,
the specimen shows a different design.
They need to be pretty much the same,
the same trademark on the application and on the specimen.
Or this could mean that it doesn't show it in use
with the relevant goods or services.
So maybe you've got a website, but your goods
and services are shirts and coffee cups,
but on the website that you submit as the specimen,
there's no reference to shirts or coffee cups
or anything even kind of similar to those things.
Those aren't gonna be acceptable.
They need to see trademark, goods and services,
and that what they're looking at
allows for the public to either purchase those goods
or inquire or sign up for those services.
The second common mistake is that it's not a real example
of how you're using the trademark.
This might be like a mock up of product packaging
or a digitally altered image,
or like a rendering of your intended packaging,
or maybe your intended website.
What you're intending to use for your specimen
isn't the actual specimen.
It needs to be the thing, the packaging, the website,
the actual thing, not just a proof
or kind of a preliminary version of that.
The third mistake, it seems kind of common,
but people, I guess, don't read instructions very well,
is just uploading another image
or digital file of the trademark.
So if you're applying to register a logo,
what I see happen a lot is that the person
just uploads another photo of the logo as the specimen.
Again, that's not what the specimen's supposed to do.
It's supposed to demonstrate
how you are using that trademark in the marketplace
in connection with the sale of your goods and services.
The fourth common mistake.
A lot of times we use screenshots or printouts of a website,
whether we're selling goods or services.
A lot of times we're selling whatever it is online,
and that's a perfectly acceptable specimen most of the time.
But if we're submitting a webpage as a specimen,
the USPTO requires that we provide the URL
or the website address where that came from
and the date that we accessed it on.
So if you upload a photo or a screenshot of your website,
but you don't give the URL or the date
that you accessed that website on,
they're gonna reject it.
The last common mistake is that the specimen
doesn't show a functioning trademark.
This comes up most often with clothing or with other kind
of merchandise or consumer goods, in my experience.
It's not enough to have a logo or a design or a phrase
and put it on the front of a shirt
and call that a trademark.
A majority of the time, when they see that,
the USPTO considers that to be a merely ornamental use.
It's not being used as a functioning trademark.
What a trademark's supposed to do
is indicate the source of a good or a service.
It's not just a decoration or a design
that goes onto a product.
I did a whole video awhile ago,
specifically about trademarks for clothing lines.
I'll link that in the description.
But the point is, a big mistake that comes up,
most commonly with clothing lines
but often with other things, is that we're not showing it
being used as an actual trademark.
It's just kind of a design or a decoration on a product,
and therefore it's considered merely ornamental.
So how do we correct these things and make sure
our specimen is accepted and our trademark gets registered?
Number one, of course, make sure your specimen
shows your trademark being used with the goods or services
that you put on the application.
Now we don't have to show it in connection
with every single good or service.
A lot of times we might be selling a ton of different stuff.
Maybe we're selling again with clothing lines.
Maybe we're selling shirts and hats and shoes,
and I don't know, pants, scarves,
beanies, hoodies, sweatshirts, all the things.
A lot of these clothing items
fall under the same international class
of goods and services.
So we don't have to submit a specimen for every single item,
but we do have to submit one specimen per class.
So if you've got a bunch of clothing items
on your application,
you just have to submit a specimen for one of those items.
And then, if you've got other classes with multiple items
or multiple services within one class,
we just need to show them used
with respect to one thing in each class.
If we're selling goods or products,
show the trademark as it's actually used in commerce.
Most commonly, this will be like the label or a tag
that's attached to your product or product containers
or packaging, or a website displaying your trademark,
where your goods or your products
can be purchased or ordered.
So again, going back to the whole clothing line thing,
don't just have the logo on the front of the shirt.
That's not gonna be good enough.
They are gonna want to see it on the garment tag
or the label to the product, or even in the packaging,
in the box that you put it in when you send it to people,
or a digital display, like on your website.
And they're also gonna want to see
that this is available for people to purchase.
So like a buy now button or the little shopping cart symbol
up at the top, just something so the trademark office,
the examining attorney, can see here's the trademark,
here's the product, here's how people can buy it.
If you're selling services, again, we need to show
how this trademark is being used in commerce.
So for services, this is typically things
like advertisements that will show the trademark,
either the business name or the logo,
and maybe some description of the service
that you're providing through your business
and a phone number or an email address
for people to sign up for your service 'cause, again,
this is supposed to be how we're using it in commerce.
We wouldn't put up a advertisement
that says our business name and all of our stuff
with no way for people to contact us.
We would have our phone number or our website address
or some way where people can,
okay, I'd like to sign up for that thing.
So that's what they're gonna want to see, an advertisement,
a brochure, promotional materials,
a business sign sometimes,
and of course, again, the good old website.
99% of the time, frankly, I just use websites for specimens,
regardless of whether it's a good or a service,
as long as it's got the info on there that we need.
But if your website has your trademark on it somewhere,
and there's a page that describes your services
and then your email address or a contact us now form,
something like that, perfect.
That's how you're using the trademark in commerce,
and that's what the USPTO wants to see.
And don't forget, when we're using those website printouts
or screenshots for the specimen,
be sure to include the URL and the date that we accessed it.
And we can submit multiple specimens.
Again, we only have to give one specimen per class,
but if you need to provide images of multiple webpages
to show the context of the trademark being used
with those goods and services, that's fine.
You can upload multiple images, multiple screenshots,
and give multiple webpage URLs and dates, if necessary.
In either event, you want to make sure
that the trademark is clearly visible on the specimen.
You don't want it to be tough to see
or hidden in there somewhere.
Make it easy for the examining attorney and the USPTO
to figure out if this is acceptable or not.
And just like we said before, this is your use in commerce.
This is what your customers
or potential customers are looking at.
If your logo is teeny tiny or hidden somewhere,
that's not gonna look that great to consumers anyway.
So why would you do that in the first place?
And lastly, of course, avoid using
digitally altered images or sample photos.
When we submit these specimens, we are acknowledging
and verifying that this is actual evidence
of how we're using the trademark in commerce.
I've seen a lot of examples where it's pretty clear
that someone just Photoshopped their logo
onto somebody else's website
or onto somebody else's product or product packaging.
That's a big no-no.
You might get away with it for a little while.
You probably won't.
But even if you do get away with it for now,
eventually it's gonna come back to bite you,
and you could get in a lot of hot water
for submitting some kind of altered
or fake or false specimen.
So completing a trademark application
and submitting an acceptable specimen for your trademark
can be really challenging.
It's often kind of confusing to figure out
how do we show how we're using this in commerce?
So of course, it's always best to work
with an experienced trademark attorney
to help you through the process and advise you
on what we need to show to have an acceptable specimen
to submit to the USPTO.
If interested, of course, you can check the link
in the description to learn more
about my ALL-INCLUSIVE trademark registration package,
where I'll let you know exactly what we need to do
to get the specimen submitted,
or help you if issues come up.
If working with an attorney is a little bit outside
of your budget, though, my online DIY trademark course,
BRANDISH, I have a pre-application guide
that specifically describes how to prepare the specimen
to submit to the USPTO, what to do, what not to do,
and to make sure your specimen gets accepted
and your trademark gets registered.
That's all for this episode, folks.
Drop a comment below, let me know what you think.
And again, don't forget to check the description
for links to additional information and resources,
including more info on my trademark services
or my DIY online course.
Thank you all so much for watching.
I'm Adan Durham and I'll see you next time.
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