September 18, 2019

September 18, 2019

Subscribe to Latest Legal News and Analysis

September 17, 2019

Subscribe to Latest Legal News and Analysis

September 16, 2019

Subscribe to Latest Legal News and Analysis

Trademark: When One Specimen Per Class May No Longer Be Enough

For use-based trademark applications filed under §1(a) of the Trademark Act, 15 U.S.C. §1051(a), applicants must submit the application along with one specimen per Class showing use of the mark for the covered goods and services. However, in the course of examining an application, the PTO can issue Office Actions requesting "additional information" needed to properly examine an application under Trademark Rule 2.61(b), 37 CFR §2.61(b) – and such information can include a request for additional specimens.  See TMEP §904.01(a) and 37 C.F.R. §2.61(b).  The Examining Attorney may also identify one or several specific goods or services in each Class for which additional specimens are required in order to proceed to registration.

It appears from anecdotal evidence that such additional specimen requests from the PTO are on the rise -- particularly for applications covering multiple goods or services within a Class that appear to be unrelated.

As the PTO appears to be increasing the scrutiny given certain use-based applications, we recommend that applicants consider the following when determining whether the way a mark is used will satisfy the PTO's technical specimen requirements:

  1. the mark should appear prominently away from all other text, preferably in a distinct size and font;

  2. for goods, the best specimens are tags, labels, packaging, or point of sale displays;  point of sale displays should show the mark in close proximity to the goods, as well as in close proximity to a link for purchasing the goods and/or information for how to purchase the goods;

  3. for service marks, the best specimens are brochures, advertisements, promotional materials, or websites, each of which would prominently feature the mark in close proximity to the described services;

  4. When in doubt, file an intent-to-use application under §1(b) of the Trademark Act, and follow-up with a Statement of Use when technical use requirements have been satisfied.

© 2019 Sterne Kessler

TRENDING LEGAL ANALYSIS


About this Author

Associate

Ms. Dalier is an associate in the Trademark, Advertising, and Anti-Counterfeiting Practice.  She focuses her practice on trademark portfolio management, prosecution, and matters before the Trademark Trial and Appeal Board. She counsels clients on mark selection, clearance, and on the creation and maintenance of trademark rights worldwide.  She conducts due diligence reviews of intellectual property assets, and works with clients on domain name monitoring and trademark enforcement. With more than ten years of experience in trademark law, she is well versed in all aspects...

202.772.8633
Monica Riva Talley, Trademark Attorney, Sterne Kessler, Law Firm
Director

Monica Talley brings more than 17 years of experience protecting some of the world's most recognizable brands to her role as a Director in the firm’s Trademark practice.  Ms. Talley specializes in strategic trademark counseling and portfolio management, developing anti-counterfeiting solutions and strategies, and trademark enforcement. 

Ranked as one of the leading trademark prosecution and strategy attorneys in Washington, DC, Ms. Talley is particularly noted for her global brand protection and commercialization strategies, and is lauded by clients for utilizing “her broad IP savvy to procure fantastic short and long-term results” (World Trademark Review 1000, 2012 and 2013).

202-772-8688