How Much Use Equals “Use”? Decoding Common Specimen Refusals issued by the USPTO
Filing a trademark example of use in the USA? You think, piece of cake. At this point you have jumped through the application hoops, chosen and narrowed your classes of goods and services appropriately and are ready to get the coveted “circle R.” You jump on your website, see the mark clearly used on the first page, hit “print,” and send it to the USPTO.
Wait, how can use not be considered “use”? As it turns out, simply displaying a mark is often not enough. Below are some tips for decoding three common specimen rejections issued by the USPTO and finding a suitable example of use.
Specimen for Goods: A proper specimen for goods must show the mark as used on or in connection with the goods in commerce.
Specimen for Services: A proper specimen for services may consist of either (1) showing the mark used or displayed as a service mark in the sale of the services, which includes use in the course of rendering or performing the services, or (2) showing the mark used or displayed in advertising the services, which encompasses marketing and promotional materials.
The mark appears on a product label. So we submitted a PDF copy of the label to the USPTO. And it got rejected…why?
The USPTO requires that a mark for goods show the mark as used in commerce. An image of a label in draft form, or even in final form but not yet on a product, may not be sufficient. If your mark is used on a product, snap a picture of the actual label on the actual product and send it in. That way, the USPTO will see how the mark is actually used in the same way consumers would see the mark.
The mark is all over our website! We submitted a copy of the homepage to the USPTO. And it got rejected…why?
While a website may be acceptable evidence of use of a mark, there are a few requirements to consider.
Goods: If your mark identifies goods, the website may be a display associated with the goods offered for sale. Take a second peek at your webpage: can a consumer order your product on the webpage or find detailed information on how to order your product from that webpage? If not, the USPTO likely rejected the example of use because it looks like your webpage doesn’t demonstrate how a consumer can make that purchase. If there is a page that fulfills these requirements – take a shot at submitting that page and explaining to the Examining Attorney how a consumer would make the requisite purchases.
Services: If your mark identifies services, then a website displaying the mark may be acceptable if it shows the mark while advertising or rendering the services and enables a consumer to make a direct connection between the mark and the offered services. This test for advertising can be a bit trickier than relying on a website screen shot to demonstrate the use of a mark for goods. Here, a consumer must be able to see the mark, and make a direct connection between the mark and the services you offer. The mark should typically be prominently displayed in a place where a consumer expects to identify the source of the services. Most often, this is in a website header or another highly visible place.
The mark is used on our instore displays. I snapped a picture for our laundry detergent product (in Class 3) and submitted it for our application (which covers Classes 1, 2, 3, and 15). And it got accepted for Class 3, but rejected for Class 1, 2, and 15…why?
When you submit an example of use, the USPTO requires you to submit one example of use per trademark class. Therefore, while the instore display is acceptable for Class 3, you will need to submit an example for each additional class covered by the application. Also, it is important to remember that while you are only required to submit one example of use per class, your filing attests that the mark is in use with all of the goods in each class. If the mark is not in use with all of the goods or services in a specific class, you can either request extensions of time to file proof of use until the mark is in use with all the goods or services, or you can divide the application so as to allow a portion of the application to proceed to registration for the goods with which the mark is already in use.
Is there one perfect example of use?
Unfortunately not. The perfect specimen is a myth, and the example of use you submit to the USPTO will be as unique as your mark and the goods and services you provide in connection with it. When selecting what example of use to submit, focus on how consumers interact with your goods and services and ensuring that the consumer sees your mark as a source identifier.