Specimens of Use for Trademarks

I’ve detailed the concept of specimens before but it’s a good idea to get into details about specimens as they apply to trademarks.

The simplest explanation is that the USPTO wants something that clearly shows the mark (i.e. the name, the name & logo, etc.) AND something that once read it is obvious that the mark is tied to the good.

In regard to trademarks, this can be accomplished several ways: "a label, tag, or container for the goods, or a display associated with the goods."

1) The Hanes clothing line has been in existence since 1901. One of the specimens they've provided for one of their many trademarks is a photograph of the tag printed on to their t-shirts. Check it out here.

2) Cover Girl is another well known American business, operating since 1958. One of the specimens they've provided over the years falls into the 'container' category, specifically the packaging lipstick comes in. You can see it here.

While there are only four ways mentioned in the USPTO's somewhat generic quote regarding acceptable specimens, there are several others that are within acceptable limits as well:

• Stampings, whether it be metal, rubber or inked on.

• Catalogs as long as it passes a three-fold test – a picture of the goods, shows the mark near the picture of the goods and provides ordering information, be it an order form, phone number, etc.

• An electronic display aka a web page. The same three-fold test that applies for catalogs is in play here.

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Specimens of Use for Service Marks

I’ve detailed the concept of specimens before but it’s a good idea to get into details about specimens as they apply to service marks.

The simplest explanation is that the USPTO wants something that clearly shows the mark (i.e. the name, the name & logo, etc.) AND something that once read it is obvious what services are being offered. In regard to service marks, this is accomplished in one of two ways: advertising or performing. Okay, so advertising – that’s pretty easy to understand, right? Brochures, yellow page ads, flyers, billboards, etc. In terms of providing a specimen showing the mark “as used in the course of performing services,” examples are best to illustrate this concept.

1) Amazon.com provides online retail services for a large number of goods. They provided a screenshot of their home page. Check it out here.

2) Starbucks provides coffee shop services and provided a picture of one of their coffee shops as a specimen. You can see it here.

Now the USPTO says that letterhead, business cards or invoices are acceptable but there’s a strict rule that must be adhered to – there must be an obvious association between the mark and the services. To avoid the dreaded office action, we recommend that our clients find another specimen as the USPTO tends to be rather strict about this.

We get a lot of calls from entertainers/bands and technically they’re offering entertainment services (live musical performances to be exact). Now providing an advertising specimen is still fairly simple here – a flyer advertising a show will suffice. When it comes to providing a specimen in connection with performance, the USPTO will accept a photograph of the group or artist “in performance with the name displayed,” e.g. name on a banner above the stage, name printed on the drum, etc.

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How to Trademark Your Clothing Line

As promised in this post, I'll explore what's acceptable as a specimen as it pertains to clothing.

When it comes to clothing, the best thing to send to the USPTO is either a tag or a label. This makes it clear that the name and/or logo is being used for a clothing line. The USPTO will no longer accept a picture of a, for instance, t-shirt with the name appearing only on the front. Those days are over.

Let's look at a few examples to illustrate this.

1) Your specimen can be a tag all on its own as seen here



2) Your specimen can be a tag that's attached and/or sewed into a garment as seen here



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Specimens: Not Just for Guys in White Coats Anymore

Picking up where we left off on Tuesday, I think it'd be a good idea to start with, well, starting. I recommend anyone looking into starting a clothing line to check out PowerHomeBiz's article about that very subject.

Okay, let's assume that you're at the trademark stage for your clothing line: you've had comprehensive research conducted; the analysis on the research has been done; and (yay!) your name is clear. Now the next step is filing for the Federal trademark.

Part of the USPTO application process involves sending the Federal government proof of how the mark is used whether it's used for goods or for services. The USPTO calls this the specimen.

I'll devote the rest of the post explaining specimens as a whole. Next week, we'll get into specimens as they pertain to the clothing industry.

Okay, first, what is a specimen? While it sounds very laboratory-ish, it's really not too complicated. Basically, the USPTO needs to see a real-world example of how your mark is used for the goods and/or services.

If you're selling goods (aka products), the specimen must be "a tag or label for the goods; a container for the goods; a display associated with the goods; or a photograph of the goods that shows use of the mark on the goods."

If you're selling services, the specimen must be "a sign; a brochure about the services; an advertisement for the services; a business card or stationery showing the mark in connection with the services; or a photograph showing the mark as used in rendering or advertising the services."

For either goods or services, it must have two important things: (1) the mark and (2) it's gotta be OBVIOUS what the goods and/or services are just by looking/reading the specimen.

Let's look at some examples to illustrate this:

1) You've got a name & a logo that you're using for your cosmetics line. To provide proof to the USPTO of your mark's use, you could submit a picture of a tag that's attached to a tangible product. Take a look at Sephora's specimen, which illustrates this perfectly.

2) You've got a name that you're using for your online retail store services. To provide proof to the USPTO of your mark's use, you could submit a screen shot of your web site. Take a look at Amazon.com's specimen.