Trademark Specimen Refusals and Use in Commerce Issues

Federal trademark registration requires proof that your mark is actually being used in commerce. For Intent-to-Use applications, you can begin the process provided you have a genuine, good-faith plan to begin using it, but you will eventually need to demonstrate use in commerce as a condition for registration. Specimen and use-in-commerce office actions are among the most common trademark refusals, but they are also among the most addressable when the underlying use is real and well-documented.

What Is a Specimen?

A specimen is a real-world sample showing how the mark is actually used in commerce in connection with the specific goods or services identified in the application. For goods, an acceptable specimen typically shows the mark on the product itself, on its packaging, or on a website display page that shows the mark alongside the product and a means of purchasing it. For services, an acceptable specimen shows the mark used in the sale or advertising of the services such as a screenshot of a service webpage, a brochure, or signage, for example.

Common specimen problems that trigger a refusal include:

The specimen appears to be a mock-up, rendering, or digitally altered image rather than an actual use
The mark on the specimen does not match the mark as applied-for
A website screenshot does not show a means of purchasing the goods (no shopping cart, no price, no order button)
The specimen shows use in connection with different goods or services than those identified in the application
The specimen shows the trademark serving some other function than as a source identifier

Use in Commerce Requirements

For a use-based application, the mark must be in actual use in commerce on or in connection with all of the goods and services identified in the application as of the filing date. Common issues include:

Claiming use on goods that are still in development or pre-launch
Use that is merely internal, promotional, or not yet directed at actual consumers
Token use such as a single or nominal sale made primarily to establish a filing date, which the USPTO can challenge as insufficient

For Intent-to-Use applications, use does not need to exist at filing, but the applicant must have a bona fide intent to use the mark in commerce. A filing made purely to reserve the mark speculatively, without genuine plans to launch, can be challenged and voided.

How Specimen and Use-in-Commerce Refusals Are Overcome

Submitting a substitute specimen. If the original specimen was deficient, the most direct solution is submitting a new specimen that clearly shows the mark in use on the goods or services. The new specimen must show use as of or before the original filing date.
Arguing the specimen is acceptable. If the examiner's objection is mistaken or overstated, a response that explains why the submitted specimen satisfies the requirements, together with supporting case law and evidence, can succeed.
Amending the identification of goods and services. If the specimen shows use only on some of the goods or services in the application, narrowing the identification to match what the specimen actually covers can preserve the application for at least those items.
Declaration of use. In some circumstances, a verified declaration explaining the circumstances of use and attesting to the accuracy of the specimen can support the response.

How Five Dogs Law Handles Specimen Refusals

Jared will review the examiner's specific objection, assess the quality of the original specimen, and identify the most effective path forward. This may mean submitting a substitute specimen, arguing that the original specimen is acceptable, or amending the application. Specimen refusals are often resolvable, but the response needs to be precise and well-supported.

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