General Conditions for Trademark and Service Mark Specimens
This blog delves into the crucial aspects surrounding specimens for trademark and service mark operations. While there exist overarching rules, numerous exceptions arise based on the mark type, the specific goods and services, and industry norms.
What Constitutes a Specimen?
A specimen serves as tangible evidence showcasing the commercial use of your mark. It essentially reflects real-life proof of how your mark operates within a business context. The legal definition of mark usage, as outlined in the Lanham Act, dictates the evidence required to establish a mark’s legitimate use in U.S. Commerce. This delineation sets distinct criteria for using a mark on goods versus services. Goods encompass products falling within the initial 35 of the 45 international classes, while services pertain to business activities categorized in the last ten classes (Classes 36 to 45).
Specimens for Goods (International Classes 1-34):
For goods classified within International Classes 1-34, the Lanham Act stipulates that a mark is considered in use when it is “placed in any manner on the goods, their containers, associated displays, or affixed labels.” Consequently, a specimen for goods must visibly display the mark, whether physically on the product, affixed to its packaging or container, on a point-of-sale display, on the website where goods are purchasable, or in a physical store where the products are exhibited. Notably, a specimen for goods can depict an advertisement only if it includes an image of the product showcasing the mark.
Specimens for Services (International Classes 35-45):
In the case of services within International Classes 35-45, the Lanham Act specifies that a service mark is considered in use “when it is utilized or displayed in trade or advertising, and the services are provided in commerce.” Hence, a service mark specimen can take the form of advertisements, brochures, website printouts, or any promotional material spotlighting your mark in relation to the services offered. Moreover, it can be exhibited on business signs, checks, company vehicles, or similar items while the services are being rendered. As services lack tangible attributes, the service mark specimen should exhibit the mark in “direct association” with the services, ensuring consumers perceive the mark’s close proximity to the service description or announcement.
Submission Requirements for Specimens:
Submitting a specimen demonstrating mark usage in commerce is a prerequisite for the registration of any mark in the U.S. This holds true whether the application basis is “Intent-to-Use” or “Use-in-Commerce.” Exceptions exist for non-U.S. entities relying on a non-U.S. registration, yet non-U.S. owners of a U.S. registration must provide evidence of U.S. Commerce usage to maintain their registration status.
Comprehending the specimen requirements for your mark is pivotal in securing, retaining, and managing a trademark or service mark within the U.S. These rights materialize only when the mark is actively used in business—a unique facet of U.S. trademark law. For further guidance or inquiries about safeguarding and effectively utilizing your mark, don’t hesitate to seek assistance.