In order for your trademark to become registered, you need to provide proof that you are selling products or providing services.

You should first review the video on submitting a Specimen in the Trademarks Classroom, which provides an explanation of how to submit proper specimens.   

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Now, it’s common to receive a Refusal in an Office Action that your Specimen or Statement of Use wasn’t acceptable.  

Let’s go over seven common mistakes about why specimens might be unacceptable to the USPTO:

Number 1. You didn’t include your trademark on the specimen!

Let’s say my trademark is JIMMYRAMA and I’m selling t-shirts.  If I submit a specimen of this t-shirt without the trademark on it, then this wouldn’t be acceptable.  In that case, I would submit a new specimen WITH the trademark.

Number 2. Your specimen wasn’t legible

This just means that your specimen couldn’t actually be read properly.  Perhaps it was too blurry that the USPTO couldn’t make out the wording or designs in your trademark.

Number 3. You didn’t show your trademark with your applied-for goods and services, or your applied-for Class.

Let’s say my trademark is JIMMYRAMA, and I’m selling t-shirts.  For my specimen, I submitted a toaster with my trademark on it.  This does not show the trademark with my applied-for goods because I didn’t apply for toasters.

So, to fix this, review your identification of goods and services.  If you did not apply for toasters, you shouldn’t provide a specimen with a toaster in it!

Also, make sure you include a proper specimen for EACH of the required Classes.  For instance, If I’m selling t-shirts in Class 25, and jewelry in Class 14, I would need to provide a suitable specimen for t-shirts in Class 25, AND for jewelry in Class 14.

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‍Number 4.  You didn’t show a direct association with your services.

Your specimen for providing services should show to potential consumers a direct association between the trademark and the services.

For instance, if I’m providing lawn cutting services, but my website only shows blog posts about makeup services, would consumers have a direct association?

No.  Make sure there are words or pictures that make it clear what you are providing.

So, if you received this Refusal, the USPTO believes there is not a “proper nexus” or connection between your trademark and your services.

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Number 5. You didn’t provide the required URL/date accessed on your application.

Remember that if you’re submitting a web site, you need to list the URL, and the date that you ACCESSED the URL.  So, if you provided a screenshot or image of your Amazon page, you can copy and paste the web site shown on the specimen.

The date accessed is the day I went to my website and took the image or screenshot.  So, if I took the screenshot on March 12, 2022, I’d put down March 12, 2022.  Remember, it’s NOT the date you created the web site!

If this was the only basis for your unacceptable specimen, it generally means that everything else about your specimen was fine – it was simply missing the information for the URL and/or the date accessed.  So, this one should be an easy fix!

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Number 6.  Your Web Site didn’t show a proper electronic “point of sale” display associated with your goods

What does this mean?  Well, a point of sale display is when a consumer can view the trademark with your goods, and immediately purchase those goods.

For electronic point of sale displays, we look at a three -part test:

First, if it contains a picture or textual description of the identified goods;

Second, if it shows the mark in association with the goods; and

Third, if it provides a means for ordering the identified goods

A common specimen for an electronic point of sale display is providing your Amazon page.

Here, you’ll see a picture and written description of the goods being sold, the trademark next to the goods, and the “Add to Cart” button, which allows consumers to immediately purchase those goods.  In that case, I’ve provided a proper point of sale display!

But, what if I provided a website that shows my trademark, and the goods I’m selling, but it doesn’t show the ability to immediately purchase the goods?  In that case, it would not be an unacceptable electronic point of sale display.

Number 7. Your Specimen was Digitally Altered or a Mockup

The USPTO wants to see your trademark used in actual commerce or business.  Receiving a digitally altered or mockup refusal means the USPTO does not believe you have shown actual use in commerce.

For instance, the USPTO does not want a computer-generated image, or when it looks like you used a computer to digitally add a trademark to a product.

Why?  Because it doesn’t then look like your goods are actually in commerce!  Instead, it looks like you had to use a computer to make it seem like you were providing your goods and services.

For example, this is a digitally altered specimen because the image of JIMMYRAMA was clearly digitally placed over another company’s product.

The purpose behind this refusal was heightened when the USPTO received a lot of fraudulent specimens, so they have been more proactive with making sure specimens are legitimate.

So, if you had used a computer to alter your specimen, as opposed to showing your actual product with the trademark on it, make sure your new specimen only shows your actual goods and services.

When you receive this type of digitally altered or mockup refusal, you should also have received a “request for information” about your trademark.  These are simply questions about your specimen, and you should answer them fully and truthfully.

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