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.

This article appeared in the June 2016 issue of MarkIt to Market. To view our past issues, as well as other firm newsletters, please click here.