And why does the PTO use such a creepy word?

Why would the United States Patent and Trademark Office (“PTO”) ask for a “specimen”? *Shiver* 

Despite the PTO using such a skin-crawling word (kinda like “phlegm” or “moist,” am I right?), a trademark specimen is simply your mark (the words/logo you want to register) + how you’re using it commercially in the real world. 

So a specimen is definitely NOT a jpeg of your logo, as it exists in a vacuum. You need to show the examiners that you’re actually using the mark (or intend to) for $$. 

How do you show you’re using your mark? 

[Skip the rest of this article and read TMEP §§ 904.03, 1301.04, and 1604.12 if you’re like, the type of person who enjoys reading ceiling fan instruction manuals for fun.]

Most of our clients sell their products or advertise their services online. If this is you, you can simply take a screenshot of your website on a page that 1) shows the mark, 2) offers a product or service, and 3) lists information about how to buy. The buying info can be an “add to cart” button, a number to call to buy (not just a customer support number), or an old-fashioned mailing order form. If you’re selling a product, a website that’s merely advertisement is usually not gonna cut it (but this is okay if you are advertising a service). 

A quick breakdown of the difference between products and services. A product is an item you are physically selling: a makeup line, clothing items, custom pottery, a software package that your customers download, etc. Services are the things you sell that require a little more interaction with your customers: styling, photography, pottery classes, SaaS, etc.  

Sometimes, you might even be selling both! A photographer might offer the service of taking wedding photos and also additionally selling custom, leather-bound wedding albums. A chef might offer the service of preparing meals for his customers and also selling his signature flavored olive oil or spices. 

It’s important to know this distinction between products and services when you register your mark for TWO important reasons: 1) you need to know what international class(es) to register under, because that will determine how many specimens you’ll be required to submit, and 2) products and services have different (and shocker: conflicting) rules on what’s an acceptable specimen. 

International Classes

Nearly everything sold falls into an international class: Class 30 for foods (covering, e.g. artisan breads, local honey, and signature spices); Class 25 for clothing (ball caps, t-shirts, and ballet slippers), & Class 43 for accommodation, food, or drink services (bars, hotels & restaurants). There are 45 possible classes total. 

For some businesses, you might only need to register in one class. This would be the case if you operate a boutique, and everything you sell falls under Class 25. For other business, you may need to register in multiple classes. This would be the case if you were proudly showcasing your logo on both your restaurant (Class 43) and your food packaging (Classes 29-33, depending on what you sell).

For each class you register, you’ll need to provide a specimen. If you’re selling a bunch of different products that happen to fall into a single class, lucky for you, you just need one specimen for the whole shabang. In other words, you don’t have to submit an example of each product or service you sell bearing your mark—one specimen for the whole class will do. 

Acceptable Specimens

So what are the different rules for specimens of products and services? Why is the USPTO trying to overcomplicate things? 

Well, because products and services are so different, they require different specimens. 

For your products, you can show that you’re using your mark commercially by snapping a photo of your wares featuring your mark on the product itself, its label, tag, packaging, or display.  

If you’re selling services, you can show use of your mark by capturing an image of a flyer you’ve been passing out in the neighborhood or another form of advertisement. Just be sure that any specimen you submit 1) shows your mark and 2) shows that a customer can actually buy the services. Submitting a brochure that only describes your services with no info to purchase is NOT considered evidence of commercial use. 

“I’m a visual person. Can I see some example?” Yes, you can! Check out these:

Examples of Product Specimens

Mark (logo):

Reg. No.: 5498103

Class: 5

Products: Cough treatment preparations; Dietary and nutritional supplements; Natural sleep aid preparations all of the aforementioned goods made in whole or substantial part of natural ingredients.

Specimen: A photo of the mark on the packaging of the product.

Mark (word): KATE SPADE NEW YORK

Reg. No.: 2841312

Class: 8

Products: Stainless steel flatware, namely, knives, forks, spoons

Specimen: A photo of the mark on the packaging of the product.

Class: 21

Products: Dinnerware, namely plates, cups, saucers, mugs, serving bowls, serving platters, sugar basins and creamer pitchers sold as a unit, salt and pepper shakers, pitchers, non-electric coffee pots and teapots not of precious metal; stemware, namely, water glasses, wine glasses, champagne glasses, double-on-the-rocks beverage glasses and highball beverage glasses; giftware, namely, bowls, vases and candle holders not of precious metal; ladles and cake servers.

Specimen: A photo of the mark on the product itself.

Mark (logo): 

Reg. No.: 5362420

Class: 16

Products: Printed recipe cards; printed recipes sold as a component of food packaging; cookbooks; binders; stickers; paper for wrapping and packaging.

Specimen: A photo of the mark on the product itself.

Mark (logo): 

Reg. No.: 5684211

Class: 4

Products: Ski wax; Snowboard wax; Wax for sports equipment, namely, all types of skis and snowboards.

Specimen: A photo of the mark on the website where the product is being sold.

Examples of Service Specimens

Mark (logo): 

Reg. No.: 4702769

Class: 41

Services: Providing facilities for game players to escape from imprisonment by exploiting their surroundings. 

Specimen: A photo of the mark on building where the services are offered. 

Mark (logo): 

Reg. No.: 5115047

Class: 45

Services: Online social networking services for businesses and individuals via a global communications network; Internet-based social networking services; online social networking services in the field of business analytics, sales and service; licensing of computer systems and software; online social networking services for others; registration of domain names; security consultancy.

Specimen: A photo of the mark on the website where the services are being sold.

So there you have it! There’s no one-size-fits-all perfect specimen. The type of specimen submitted might be unique to your business and how it markets its products or services to the world. 

If you would like some expert help in finding just the right specimen for your products/services, consider hiring a trademark attorney, like those helpful folks at Southtown Moxie. 10/10 recommend

 

Additional attorney-assisted education:

How do classes play into attorney examinations for allegations of infringement?

Can I game the system with some of those fill-in-the-blank subclasses?

I sell my beer in kegs to local ale houses. What works for me?