There are many reasons why a trademark application may be rejected by the USPTO. The “specimen refusal” is one of the more common rejections. Applicants that file without the help of a trademark attorney frequently run into this problem. In this post, I will explain the purpose of the specimen, look at some of the most common specimen refusals, and review some potential options for getting around the rejection.
What Is a Specimen?
The specimen essentially shows the Trademark Office how you are using your mark in connection with your products and/or services. For a deeper dive on the topic, you can check out my blog post here. There are several ways to show use of your trademark. Some of the most common specimens are photographs or website screen shots. Whatever you use, your specimen must demonstrate to the Trademark Office that you are providing your products/services in a way that is clearly connected to your mark. If not, you will receive a specimen refusal.
Common Reasons You Might Receive a Specimen Refusal
There are several common situations where a specimen refusal will be issued. The first is if there are inconsistencies between the mark you’ve applied to register and the mark in your specimen. For example, let’s say that you want to register the name ABC HAMBURGER for “restaurant services.” To support your use of the name, you submit (1) a photo of the outside of your restaurant that shows your big, flashy, neon-lighted sign, and (2) a screenshot of your website that shows your menu. After filing your application, you decide that it should really be called “The ABC Hamburger Shack.” So your signs and website both say THE ABC HAMBURGER SHACK together on one line with the same size and font. Well, when you include these specimens with your Statement of Use, you’re going to get a specimen refusal because the marks don’t match. The marks have to match, of course.
Another common specimen refusal is that the specimen does not show use of the mark in connection with the products/services listed in the application. Let’s look at the previous example. Only this time, let’s change the specimen that you submitted. Instead of the photograph of your sign and screenshot of your website, let’s say you took a photograph of a frozen hamburger product that you are selling in grocery stores. The hamburger is wrapped in plastic with ABC HAMBURGER in big letters on the front. You submit this photo as your specimen and, sure enough, it gets rejected. That is because your application is for “restaurant services.” Your frozen hamburger is a food product, and not the service of providing a restaurant. So the photograph that you provided does not demonstrate use of ABC HAMBURGER with the service for which you applied.
Finally, you may receive a specimen refusal if your specimen is not in actual use in commerce. For example, if you submit a mock-up of what your product will look like, it will not be accepted. That it because your mark must be in use in commerce at the time you file your specimen, whether in your initial application, or in the Statement of Use. This rejection also occurs when your specimen indicates that your service has not been provided in the past. Let’s say that you are hosting a series of charity events. If your specimen says something like “Inaugural…” or “First Ever…” and the event is scheduled for a date after you filed the Statement of Use, then clearly you did not have use in commerce, because you hadn’t hosted one of these events yet.
Options for Overcoming a Specimen Refusal
There are many cases where you can get around a specimen refusal. But before discussing those options, here are a couple reasons that you may not be able to overcome the rejection. First, you may not be able to overcome the rejection if you filed for the incorrect product and/or service with your application. This happened to a client of mine that accidentally filed their mark in connection with “beauty spa services.” What they were actually providing was a line of skin care products. Since they were never going to open up a beauty spa, the only thing to do was to let their application go abandoned. Another example would be if you make a material alteration to the mark, so that it is no longer the same as the mark for which you applied to register. These are situations that you definitely want to avoid.
The first option you have if you receive a specimen refusal is to submit a substitute specimen. Basically, this your second chance to get it right. Keep in mind that there are certain requirements for the substitute, though. If you filed your application on an In Use basis, for example, then you must have been using the mark as it appears in the substitute at least as early as the filing date of your application.
Another option that you have is to convert your filing basis to an Intent to Use basis. This is a great option if you realize that you did not actually have use of your mark in commerce when you filed your application. It is also very important because applications that claim use of a mark in commerce before it is actually established are flawed. They may become registrations, but those registrations can be cancelled. You want to avoid getting a registration that doesn’t hold up to legal challenge.
Have You Received a Specimen Refusal on Your Trademark Application?
I am happy to take a look at the office action you received and tell you whether the issue can be easily remedied, or if your application has bigger problems. If you want a diagnosis from an experienced trademark specialist please feel free to call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
