Trademark Specimen Refusal ? Does Not Show Use With Specified ...

You want to trademark a name.? You thought you figured out how to file for trademark registration and filled out the online application form at www.uspto.gov.? Several months after filing your trademark to be registered, you received an office action from the examining attorney at the trademark office.? The office action states that the specimen you submitted for your services is inadequate.? An experienced trademark registration attorney can help you understand what to do next in order to fix your trademark application and proceed successfully through trademark registration.?

Here is an example of a trademark specimen refusal from the USPTO.?

Specimen Refusal ? Does Not Show Use With Specified Services The specimen is not acceptable because it does not show the applied-for mark used in connection with any of the services specified in the application. An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services. Trademark Act Sections 1 and 45, 15 U.S.C. ??1051, 1127; 37 C.F.R. ??2.34(a)(1)(iv), 2.56(a); TMEP ??904, 904.07(a).

A specimen for a service mark must show use of the mark ?in the sale or advertising of services.?

Trademark Act Section 45, 15 U.S.C. ?1127; see 37 C.F.R. ?2.56(b)(2); TMEP ?1301.04. Indeed, ?[w]hile the nature of the services does not need to be specified in the specimens, there must be something which creates in the mind of the purchaser an association between the mark and the service activity.? In re Adair, 45 USPQ2d 1211, 1215 (TTAB 1997) (quoting In re Johnson Controls Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)). There must be sufficient reference to the services in the specimen to create this association. In re Monograms Am., Inc., 51 USPQ2d 1317, 1318 (TTAB 1999); see TMEP ??1301.04 et seq.

If the specimen does not show the mark with reference to, or association with, the services, the specimen fails to show service mark usage. See In re Osmotica Holdings, Corp., 95 USPQ2d 1666, 1668 (TTAB2010) (stating that ?[a]t a minimum, the specimen must show a direct association between the services and the mark sought to be registered?); In re DSM Pharms., Inc., 87 USPQ2d 1623, 1624 (TTAB 2008) (finding the mark must be used in a manner on the specimen so as to identify the applicant?s services and their source ?via a direct association?).

Therefore, applicant must submit the following:
(1) A substitute specimen showing the
mark in use in commerce for each class of goods and/or services specified in the application; and
(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. ?2.20: ?The substitute specimen was in use in commerce at least as early as the filing date of the application.? 37 C.F.R. ?2.59(a); TMEP ?904.05; see 37 C.F.R. ?2.193(e)(1).If submitting a substitute specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. ?2.71(c); TMEP ?904.05.

Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the actual sale or advertising of the services. See TMEP
??1301.04 et seq.

If applicant cannot satisfy the above requirements, applicant may amend the application from a use in commerce basis under Section 1(a) to an intent to use basis under Section 1(b), for which no specimen is required. See TMEP ?806.03(c). However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. See 15 U.S.C. ?1051(c), (d); 37 C.F.R. ??2.76, 2.88; TMEP ?1103.

To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. ?2.20: ? Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application as of the filing date of the application.? 37 C.F.R. ?2.34(a)(2); TMEP ?806.01(b); see 15 U.S.C. ?1051(b); 37 C.F.R.??2.35(b)(1), 2.193(e)(1).

Pending receipt of a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark and/or service mark for the identified goods and/or services. Trademark Act Sections 1 and 45, 15 U.S.C. ??1051, 1127; 37 C.F.R. ??2.34(a)(1)(iv), 2.56(a); TMEP ??904, 904.07(a).

Although applicant?s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

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