Though Communer’s flagship products are registered trademarks, we also sell other intangible goods including legal guides. Our first guide available is our Trademark Specimen Handbook, which I wrote myself to help people whose trademark specimens have been rejected.
At 35 pages and over 9,000 words, it’s a comprehensive resource for anybody trying to file their own trademark application or overturn an office action from the USPTO relating to a specimen issue. As the attorney of record for over 2,500 successfully registered trademarks, I’ve seen pretty much everything when it comes to trademark specimens.
In addition to specimen examples and statement-of-use tutorials, the Handbook has detailed instructions on how to overturn many different types of office actions relating to specimens.
In this post I’ll go over several trademark specimen examples that I’ve pulled from the Specimen Handbook.
What Is a Trademark Specimen?
A trademark specimen is some kind of evidence that a trademark is being used in commerce. This can be a photograph of your branded product, a screenshot of your website where your goods or services are being offered, or a photograph of a consumer-facing location like a retail store.
“Use In Commerce” Meaning
For most trademark applicants, use in commerce is a requirement for reaching registration in the United States. A trademark is “used in commerce” for particular goods or services when those good or services are being offered to U.S.-based consumers in association with that trademark. They must also be offered in a way that is regulated by Congress.
The three most common ways for a trademark to be used in commerce are interstate commerce, commerce from a foreign country to a U.S. state, and commerce in a federally governed place like the District of Columbia. If you sell a wholesale product that’s available in retail stores in multiple states, that counts as interstate commerce. A foreign company shipping their goods to consumers in the United States also counts as use in commerce.
The web has made it really easy to use your trademark in commerce because if you offer your goods or services for sale (or for free) on your website, and you offer them to consumers in the United States, then that most likely counts as use in commerce.
Do You Have to Prove Use in Commerce?
What’s funny about trademark specimens is that they often don’t really prove that you’re using your trademark in commerce, despite that being their official purpose. Requirements for photograph specimens are notably lax, and it’s hard to understand why the USPTO accepts many of these photographs as proof that a product is for sale in the United States.
If you have one prototype of your product, and your trademark is on the product or its packaging, you can send a photograph in to the USPTO and they’ll probably approve your specimen even though, from a legal standpoint, this would likely be a fraudulent specimen. As long as the photograph doesn’t look like it’s digitally altered, and it clearly seems to show your product with the trademark on it, the USPTO will take your word that this photographed product is being offered in a way that satisfies use-in-commerce requirements.
However, you or your attorneys are also required to e-sign a statement saying you are actually using the mark in commerce. So if you submit this sort of specimen when your products are not actually available to U.S.-based consumers, you’ll likely be committing fraud against the USPTO.
Note that pre-sales generally don’t count. The USPTO doesn’t like Kickstarter pages as specimens, nor do they like any website that says something like “Coming Soon” or “Pre-Order Now.”
Examples of Different Types of Trademark Specimens
Specimens come in two basic forms: Photographs and screenshots. Photograph specimens include pictures of goods and pictures of physical locations like brick-and-mortar retail stores. Screenshot specimens include screenshots of websites and screenshots of software applications.
Trademark Specimen for Physical Goods and E-Commerce
If you’re registering a trademark for physical goods, you have two convenient ways to create a valid specimen. You can either submit a photograph of your branded product or a screenshot of an online store listing for the product. There are other types of specimens that work, but the vast majority of my clients file one of these two types of specimens.
Photographs as Specimens for Physical Goods
Submitting a photograph of your product as a specimen is simpler than one might assume based on existing trademark law. But no evidence is needed that the goods are actually being sold in the United States.
All you need is a photograph of your branded product, or a photograph of the branded packaging that contains your product. No evidence or documentation is needed for when the photograph was taken.
To be a good specimen, a photograph of your product must show the following:
- The trademark on the product or its packaging. It should be easily readable if the trademark contains wording. Don’t send in a photo with blurry wording that the USPTO examiner might not be able to read.
- Some kind of indication of what the product in the photograph is, so that the USPTO understands that this is one of the goods you applied for in your trademark applications. This could mean the generic name of your product is displayed on the packaging (e.g. “potato chips”) or it could mean that the product looks like the goods you filed for. For example, if you send in a photograph of a hair dryer that has your logo on it, it doesn’t also need to say “hair dryer” on it because it’s obvious that the product is a hair dryer.
Below is an example of a photograph specimen for hard seltzer goods. It’s a cell phone picture I took at my closest bodega of the hard seltzer made by my client, Two Robbers.
This is an ideal specimen because the brand name is displayed straight-on and clearly in the picture, without any of the lettering hidden, and it also says “Hard Seltzer” somewhere on the packaging, confirming what the product is.
It would work as a specimen for either the Two Robbers name as a word mark or the Two Robbers logo mark for hard seltzer in class 33. If you filed your trademark application for any additional products in class 33, the wines and spirits class, this photograph is the only specimen you’ll need for that class.
Webpage Screenshots as Specimens for Physical Goods
Submitting a webpage specimen for your physical goods is a little more complicated than submitting a photograph, but still fairly straightforward. It just needs to be a screenshot of a functional online store listing for your product.
To be a proper specimen, your webpage screenshot must show:
- Your trademark displayed somewhere on the webpage. This can be the navigation bar of the website, the name of the product listing, or perhaps in the description of the product, as long as it looks like it’s being used as a brand identifier. However, if the trademark only appears in the product photo, the USPTO probably won’t accept it. It must be contained in the writing of the webpage.
- An indication of what the product is. Ideally you will say outright what the product is, and that description will match the goods ID you filed for with your trademark application, e.g. it says “vacuum cleaner” somewhere on the page. But anything that implies that it’s the product you filed for is fine, e.g. “Use this to make cat hair disappear!” in the description for a lint roller.
- A functioning online cart form that allows US-based consumers to buy the product. It’s crucial that in your screenshot, you have some kind of “Add to Cart” or “Buy Now” button in the listing. And it should actually work. Because you’re required to submit the URL for every webpage specimen, the USPTO might go to this store listing and test its functionality.
- Ideally the pricing will be in dollars as well, to make it clear that US consumers can buy the product, but it’s okay if it’s in a foreign currency as long as you actually do offer shipping to the United States.
See the image below for an example of a valid webpage specimen for a physical product. It’s a screenshot I took of an online store listing of my client, Sommer Swim.
The above screenshot for the word or logo mark for “Sommer Swim” is ideal because it shows the brand name written somewhere on the webpage (not just in the product image), describes what the product is, does not describe the product as “out of stock,” and has an “Add to Cart” and/or “Buy Now” button.
Trademark Specimens for Services
As with specimens for goods, you can submit a photograph specimen or a webpage specimen for a service. However, I usually submit webpage specimens for my service-provider clients rather than photograph specimens.
Webpage Specimens for Services
If you have a website, getting a good specimen is usually very easy for services. Your website doesn’t have to be nearly as functional as an e-commerce website.
A website specimen for services really just needs to show your trademark, a very brief description or implication of your services, and a way to contact you. It doesn’t have to be an elaborate website and it doesn’t have to detail your pricing. Just your brand, some words about your services, and a contact form or email address.
Above is a screenshot of my law firm’s website that could serve well as a specimen for the word or logo mark for “JPG Legal” for legal services. It has the brand name and logo, mentions the service offered, and has a “Start Now” button.
Photograph Specimens for Services
If you provide your services from a physical location and you have some branding on display at this location, it’s a pretty simple matter to take a photograph of your place of business and submit it as a specimen. Usually this will be a picture of an office or retail location.
The image below is one example of a strong photograph specimen for a service, specifically for the word trademark “JPG Legal” for legal services in class 45.
It’s a photograph of the outside of my law firm’s physical office, prominently featuring our signpost. The sign is perfect because it contains the firm’s name and a brief description of the services offered.
Class 35 Retail Store Services Specimens
There’s one type of service that’s actually harder to submit a website specimen for than other services and even goods. That’s “online retail store services” in class 35 and other identifications like that (e.g. retail store services, wholesale services, online department store services, etc.).
In this situation, you’ll probably need your own website with a functioning online shopping cart (e.g. your own Shopify store). You can’t use an Amazon listing, or even an Amazon store, as a specimen for online retail store services.
And for good measure, your website should look like it’s a real online store with multiple products, not just one product. The specimen example below is a screenshot of a listing on the online store of my client, St. Mark’s Comics, which is registered for retail store services for comic books and licensed merchandise.
Like a screenshot specimen for goods, this example shows a functioning online ordering system for the goods described in the trademark application. Additionally, it shows that the applicant has their own online store on their own website, and it shows the trademark in the branding for the store, not just in the product listing. This makes it clear to the USPTO that the trademark identifies a retail store and not just a line of goods.
Photograph Specimens for Retail Store Services
As with other services, you can also submit a photograph of your brick-and-mortar retail store or kiosk if you have one, as long as you didn’t only specifically file for “online” retail store services. Photographs of your products themselves won’t count unless your store is clearly in the picture too.
This photograph I grabbed from the St. Mark’s Comics website fits the bill. It shows my client’s storefront with the brand name on it and indications of the products sold. It’s easy here because the brand has the product described in the name itself, plus there are physical comics shown in the picture.
Trademark Specimens for Software
The USPTO generally separates software into two classes: Class 9 for downloadable or recorded software, and Class 42 for web-based software.
Class 9: Downloadable or Recorded Software
A specimen for downloadable software in Class 9 should either be a screenshot(s) of your app itself showing the mark and a brief description/implication of the software’s function, or a screenshot of a download link for your software in an app store platform or on a website.
If you filed for software in Class 9, but you send the USPTO a screenshot of web-based software, your specimen should be rejected. So a log-in page or a sign-up page on a website is not going to work for Class 9, nor is a screenshot of the software itself in a web browser. Below is an example of a Class 9 software specimen using Among Us as the example trademark.
Class 42: Web-Based Software
A specimen for software in Class 42 must show non-downloadable, non-recorded software, which essentially means it must be software hosted on a website.
Your specimen should be a screenshot(s) capturing either a log-in page, a sign-up page, or the browser-based app itself. One screenshot can be enough if it shows the mark and a brief description or implication of the software’s functions. See this example of a Class 42 software specimen using Stripe as the example trademark.
If you want to learn more about software specimens and statements of use, I cover it in great detail on this post on my legal blog.
Get the Trademark Specimen Handbook for More Help
All of the information in this blog post came from the Trademark Specimen Handbook, which was written to help trademark applicants overcome common trademark specimen-related rejections. It’s filled with detailed explanations about many common rejections that happen for a variety of goods and services.
The guide also has a section with screenshots of the trademark application or statement-of-use form and how you should fill those out, plus a section on how to take a screenshot on Windows or Mac and how to properly format it for the USPTO’s requirements.
