By: Milton Oliver
When most people hear the word “specimen,” we think it relates to what you might find in science class. However, in the trademark world, it means something completely different. In most businesses, your mark or brand is crucial to your success and growth. “Specimen” is the legal word for how you prove to the government that you are using your mark or brand and deserve to have the exclusive right to use it for your particular goods & services.
Why are “specimens” so important to your business?
There are two main routes to obtaining federal registration on your mark—“section 1(a)” applications and “section 1(b)” applications. But both these routes require submitting an acceptable specimen of mark use. For a “section 1(a)” application based on actual use of the mark in commerce, the specimen must be submitted, or filed, as part of the application. For a “section 1(b)” application based on the Intent-to-Use (“ITU”), the specimen must be submitted in a second stage of examination at the Trademark Office, after a month-long period during which competitors can oppose the grant of a registration.
Who decides whether a specimen is “acceptable” or “not acceptable” and what is the standard for that decision?
The Patent & Trademark Office (“PTO”) designates one attorney-examiner to handle your application for registration, and that examiner decides, based upon the “specimen(s)” and accompanying sworn statement you submit, whether the specimen or specimens are acceptable. Due to a rise in fake “specimens” received in recent years, many of which come from abroad, the PTO now asks more probing questions than they did in former years.
First, they make sure that the term applied for functions as a mark, i.e. if a customer recognizes the term as the name of the product or just as a slogan or a geographic descriptor. Second, does the specimen look like a real commercial product with usual info, such as ingredients or materials, or just a “mock-up” from a graphic designer?
Lately, many people submit screenshots from a website as a “specimen.” But the PTO only approves screenshots if the website provides a way to start a commercial transaction; otherwise, the website does not qualify as “use” but rather as advertising. Further, when you send the website screenshot to the PTO, you must include the website address (Uniform Resource Locator or URL) and the date on which you retrieved the image(s).
In re Yarnell Ice Cream LLC was a case decided in 2019 by the TTAB (Trademark Trial & Appeal Board) concerning a proposed mark, SCOOP, for “frozen confections and ice cream promoted and distributed by a mascot named SCOOP at distributions of the product”. When marks are used for products, US trademark law has an “affixation” requirement. This means the mark must appear on a label, on a tag, or on a package or container in which the product is sent or sold. The Yarnell company submitted to the PTO, as a “specimen” of use of SCOOP on ice cream, a photo of a shirt worn by the mascot. The shirt bore the word SCOOP. The Board ruled that the SCOOP term did not function as a trademark because it did not appear on the ice cream product and because customers would tend to regard it as the name of the mascot, not the name of the ice cream product.
What is the Takeaway?
To get to the finish line of the U.S. trademark registration process, you must satisfy the examiner that the specimens, which you submit, (A) prove that you are using the mark in a way that customers recognize as the name of the product or service and (B) be what you actually use in the commercial marketplace, not a fake mock-up from your graphic designer or advertising agency. Getting good advice from experienced trademark attorneys will help you obtain your federal registration certificate and build value for your brand!