The Trademark Specimen Handbook
The Comprehensive Manual for Specimens, Specimen Refusals, and Picking Goods and Services for Your Trademark Application
This guide helps U.S. trademark applicants overturn USPTO office actions without legal help.
Downloadable PDF with download link made available after purchase.
This guide is part of Communer’s Ask a Jewish Lawyer® series of legal guides.
This guide is meant for anybody who wants to submit (or re-submit) a specimen to the USPTO. It’s full of trademark specimen examples, statement-of-use tutorials, and instructions for how to overturn various specimen-related office actions by the USPTO.
If you’re about to submit a specimen to the USPTO, you’re almost certainly doing it for one of these three reasons:
- You’re about to file a new trademark application under a 1(a) use-in-commerce basis;
- You’re about to file a statement of use or allegation of use as a follow-up to an application you filed earlier under a 1(b) intent-to-use basis; or
- Your original specimen was rejected by the USPTO and now you need to file a substitute specimen in an office action response.
Most people reading this guide fall under the third category and have already received a refusal for their specimen. The demand for a new specimen is arguably the most complicated “minor” office action to respond to. If you’re lucky, you can come up with a new specimen to submit that will meet the USPTO’s requirements. If you’re less lucky, you may have to amend your application to a 1(b) intent-to-use basis, meaning you’ll file a statement of use later on and pay the USPTO’s $100 fee per class to file a Statement of Use.
If you’re really unlucky, it will turn out that you’ve filed for the wrong goods/services altogether and will have to file a new trademark application. Sometimes what seems to be an issue with your specimen is actually an issue with the goods/services identifications you included on your application.
Unfortunately, you can’t add new goods or services to an existing trademark application; you can only narrow them down. For example, if you filed for the goods/services ID of “televisions” in class 9, you can narrow it down to “flat-screen televisions,” but you can’t change it to “remote controls for televisions” or “laptop computers,” nor can you add any additional goods/services, whether they’re in class 9 or not.
This guide will not only show you how to submit the proper specimen for almost any type of good or service imaginable, but it will also discuss what goods/services to file for in the first place for common scenarios where people file for the wrong goods/services. If you already received a specimen refusal, this guide will help you figure out how your application can be salvaged, and whether it’s even possible to do so. It will also serve as a valuable reference book for future trademark application filings.
If you’ve encountered a situation that you believe is reasonably common, and this guide has not helped you figure it out, feel free to reach out to Jeremy at email@example.com and let him know. He may tell you what he’d do in your situation and add it into the next volume of this guide.
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