Once you submit your trademark application, The Trademark Office will examine it to ensure that it meets a number of standards. If it does not, the attorney assigned to your application will issue what is referred to as an “office action.” This document lists the problems that must be resolved for your application to move forward. In February, the Trademark Office added another potential obstacle. There are new specimen requirements for website screenshots. If you fail to meet the new requirements, the Examining Attorney will issue a specimen refusal. You will have to address this refusal, or your application will go abandoned.
The New Specimen Requirements
Whether in your initial application (for those filed on an in use basis), or in a Statement of Use (for those filed on an intent to use basis), you will eventually need to show the Trademark Office how you are using your trademark. One of the most common ways of doing so is to provide a screenshot from your website. For example, service providers usually show how they are using their trademark in this way. Almost all service providers have a website. That website usually shows the trademark and describes the services provided in connection with the trademark.
If you provide a screenshot to show use of your trademark, there are 2 new specimen requirements. First, you must provide the URL of the web page where you took the screenshot. Next, you must provide the date when you accessed the web page. You can avoid this specimen refusal by making sure both are visible in the screenshot when you take and submit it. Otherwise, you can include this information elsewhere in the application or Statement of Use form.
Responding to Refusals Based on New Specimen Requirements
If you do not provide the URL and date accessed for screenshot specimens, you will get an office action. The Examining Attorney will make a specimen refusal that you then have to address. You have a couple options to take care of the issue.
Hopefully you have the URL and date accessed available to you. If so, you can submit an office action response and just tell the Examining Attorney this information. You must submit the response with a signed declaration. However, if done correctly this should resolve things. Alternatively, you can submit a substitute specimen. This substitute should include the URL and date accessed, of course. You also need to be sure that it was in use either when the application (for in use) or Statement of Use (for intent to use) was filed. Finally, you may be able to convert your application to an intent to use basis and just file your specimen later on.
Have You Received an Office Action with a Specimen Refusal?
Whether the refusal you received was based on the new specimen requirements, or any other issue, it is a good idea to have a trademark attorney take a look. In many cases, an office action may have several issues that must be addressed. I would be happy to review your office action free of charge to let you know if your application can be “fixed.” If you would like me to take a look, please 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.
