Because an application based on §1(a) or an allegation of use under §1(c) or §1(d) must properly allege current use of the mark, an applicant must attest to dates of use in the application or allegation of use that are on or before the date the application or allegation of use was signed; an applicant may not allege use that has not yet occurred. See 37 C.F.R. §§2.33(b)(1), 2.76(b)(1)(ii), 2.88(b)(1)(ii); TMEP §§903.04, 1109.09(a).
If an application, or an allegation of use under §1(c) or §1(d), specifies a date of first use only by the year, or by the month and the year, and the date would otherwise be interpreted under TMEP §903.06 as later than the date on which the application or allegation of use was signed, the USPTO will presume that the date of first use is the date on which applicant signed the application or allegation of use. For example:
Filing date: January 15, 2015
Signature date: December 27, 2014
First use anywhere: 2014
Presumption of first use anywhere under §903.06: December 31, 2014
Amendment to clarify first use date is not required: Although the presumed date of first use under TMEP § 903.06 (December 31, 2014) is later than the signature date (December 27, 2014), it is not later than the filing date (January 15, 2015). Thus, under TMEP § 903.06(a), the examining attorney may presume that the use date is the same as the date of signature.
However, if the date of first use would be interpreted under TMEP § 903.06 as later than the filing date of the application or allegation of use, then amendment of the date of use to an earlier date, supported by an affidavit or declaration under 37 C.F.R. §2.20, is still required. For example:
Filing date: January 15, 2015
Signature date: December 27, 2014
First use anywhere: 2015
Presumption of first use anywhere under §903.06: December 31, 2015
Amendment to clarify first use date is required: The presumed date of first use under TMEP § 903.06 (December 31, 2015) is later than the filing date (January 15, 2015). Thus, under TMEP § 903.06(a), the examining attorney may not presume that the use date is the date of signature and must require an amendment to indicate the date of use more specifically.
If an application or allegation of use specifies the date of signature only by the year, or by the month and the year, and the date would be interpreted under TMEP §903.06 as later than the date(s) of first use, the USPTO will presume that the date of signature was on or after the date of first use.
If the mark in the application is a composite mark, the applicant may specify dates of first use of a separable element of the composite mark. These dates will be printed on the certificate of registration for general information. However, the applicant must also specify the dates of first use of the entire composite mark for which registration is being sought.
If more than one item of goods or services is specified in a particular class, the date of first use anywhere and date of first use in commerce do not have to pertain to every item in the class. It might be that the mark, although in use on all of the items at the time the application or allegation of use was filed, was first used on various items on differing dates, so that it would be cumbersome to designate the dates for all items individually. See Sunshine Biscuits, Inc. v. Berke Bakeries, Inc., 106 USPQ 222 (PTO 1955); Ex parte Wayne Pump Co., 88 USPQ 437 (PTO 1951).
There must be at least one item in a class to which the specified dates pertain. See 37 C.F.R. §§2.34(a)(1)(v), 2.44(a)(4)(i)(B), 2.45(a)(4)(i)(D). Where the dates of use do not pertain to all items, the applicant should designate the particular item(s) to which they do pertain.
Where the dates of use do not pertain to every item in the class, and the identification of goods or services is amended to delete the item(s) to which the dates of use pertain, the applicant must amend the dates-of-use clause to specify the dates that apply to an item that remains in the identification. See TMEP §903.04 regarding amendments to dates of use.
If more than one item of goods or services is specified in a particular class, the USPTO will presume that the dates of use apply to all the goods or services, unless the applicant states otherwise.
Where more than one date is specified for a particular class, the earliest date will be printed in the Official Gazette and, if a registration issues, on the certificate of registration. The Official Gazette and registration certificate will not indicate which item is specified.
See TMEP §1304.02(a)(i)(B) regarding dates of use for collective membership marks.
Specimens are required because they show the manner in which the mark is seen by the public. Specimens also provide supporting evidence of facts recited in the application.
A trademark or service mark application for registration under §1(a) of the Trademark Act must include one specimen for each class, showing the mark as actually used in commerce on or in connection with the goods or services identified. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a)–(b). If an application under §1(a) is filed without a specimen, the examining attorney must issue an Office action requiring the applicant to submit one specimen for each class, with an affidavit or declaration under 37 C.F.R. §2.20 stating that the specimen was in use in commerce at least as early as the filing date of the application. See 37 C.F.R. §2.59(a). The Office action must also indicate registration is refused under §1 and §45 of the Trademark Act because the applicant has not provided evidence of use of the mark in commerce. See 15 U.S.C. §§1051(a)(1), 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a).
In examining a specimen filed with an application under 15 U.S.C. §1051(a), an amendment to allege use under 15 U.S.C. §1051(c), or a statement of use under 15 U.S.C. §1051(d), the examining attorney must refuse registration if the specimen indicates that the goods have not been "sold or transported in commerce." 15 U.S.C. §1127. For example, a webpage for placing pre-sale orders for goods that are not yet available does not show use of the mark in commerce in connection with the goods, even if it otherwise meets the requirements for an acceptable display associated with the goods. See Richardson-Vicks, Inc. v. Franklin Mint Corp., 216 USPQ 989, 991-92 (TTAB 1982) (finding that the goods to be identified by the mark must be in existence at the time of a sale); cf. Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350, 1360, 90 USPQ2d 1301, 1308 (Fed. Cir. 2009) (holding that actual use of the mark in commerce in connection with an existing service is required and that mere preparations to use a mark sometime in the future does not constitute use in commerce); CBC Mortg. Agency v. TMRR, LLC, 2022 USPQ2d 748, at *24 n.15 (TTAB 2022) (finding registration of domain names comprising the mark did not constitute use of the mark in commerce); In re Port Auth. of N.Y., 3 USPQ2d 1453, 1455 (TTAB 1987) (finding advertising and promoting telecommunications services before the services were available insufficient to support registration); In re Cedar Point, Inc., 220 USPQ 533, 535-37 (TTAB 1983) (holding that advertising of a marine entertainment park, which was not yet open, was not a valid basis for registration); In re Nationwide Mut. Ins. Co., 124 USPQ 465 (TTAB 1960) (holding that stickers placed on policies, bills, and letters announcing prospective name change is mere adoption, not service mark use). See TMEP §1301.03 regarding use of a service mark in commerce. The Office action must indicate that registration is refused under §1 and §45 of the Trademark Act because the applicant has not provided evidence of use of the mark in commerce for the identified goods. See 15 U.S.C. §§1051(a)(1), 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a).
In an application for registration under §1(b) of the Trademark Act, no specimen is required at the time the application is filed. However, before a registration will issue, the applicant must file an allegation of use that includes one specimen for each class, showing use of the mark in commerce on or in connection with the goods or in the sale or advertising of the services. See 37 C.F.R. §§2.56(a), 2.76(b)(2), 2.88(b)(2).
No specimen showing use of the mark in commerce is required in an application based solely on §44 or §66(a) of the Trademark Act, 15 U.S.C. §§1126(d)-(e), 1141f(a). While a §44 or §66(a) applicant must assert a bona fide intent to use the mark in commerce, the applicant is not required to assert actual use in commerce prior to registration. Crocker Nat'l Bank v. Canadian Imperial Bank of Com., 223 USPQ 909 (TTAB 1984); TMEP §§1009, 1904.01(d).
If the nature of a specimen is unclear, the applicant must explain what it is and how it is used.
A photocopy or reproduction of the drawing is not an acceptable specimen. 37 C.F.R. §2.56(c).
Interested parties, including potential opposers, may view and print images of the specimens in an application or registration file through the Trademark Status and Document Retrieval (TSDR) portal on the USPTO website. The USPTO does not permit specimens to be removed from the record. Furthermore, once filed, specimens remain part of the record and will not be returned to the applicant. 37 C.F.R. §2.25. This ensures that there is a complete record of the submissions made by the applicant. See 64 Fed. Reg. 48900, 48901 (Sept. 8, 1999), 1226 TMOG 103 (Sept. 28, 1999); see also TMEP §404.
See TMEP §1301.04 regarding specimens for service marks. For information regarding specimens for collective trademarks and collective service marks, see TMEP §1303.01(a)(i)(C); for collective membership marks, see §1304.02(a)(i)(C); and for certification marks, see §§1306.02(a)(i)(B), 1306.04(c)-(d).
One specimen for each class is required in an application for registration under §1(a) of the Trademark Act, or in an allegation of use in an application under §1(b). 37 C.F.R. §2.56(a). If a single specimen supports multiple classes, the applicant should indicate which classes are supported by the specimen. The examining attorney need not require multiple copies of the specimen. The examining attorney should enter a Note to the File in the record indicating which class(es) the specimen supports. The examining attorney may require submission of additional specimens under 37 C.F.R. §2.61(b) when reasonably necessary to the proper examination of the application.
Generally, if more than one item of goods, or more than one service, is specified in one class in an application, the applicant normally need not provide a specimen for each good or service. The examining attorney may request additional specimen(s) under 37 C.F.R §2.56(a) and §2.61(b) when, for example, the range of items is wide or contains unrelated goods or services.
If the goods are a "full line of pharmaceuticals," however, the examining attorney must require the applicant to provide evidence that it uses the mark in connection with pharmaceuticals to treat diseases or health problems in all chapters in the World Health Organization (WHO) International Statistical Classification of Diseases and Related Health Problems. See 37 C.F.R. §2.61(b).
See TMEP §1402.03 regarding broad identifications, §1402.03(b) regarding house marks, and §1402.03(c) regarding marks for "a full line of" a genre of products.
A combined or multiple-class application is a request to register the same mark for goods, services, and/or a collective membership organization in multiple classes in a single application. See 37 C.F.R. §2.86(a),(b). In a multiple-class application filed under §1(a), an applicant must provide one specimen of the mark supporting each class. 37 C.F.R. §2.86(a)(3), (b)(3). If a single specimen supports multiple classes, the applicant should indicate which classes are supported by the specimen. The examining attorney need not require multiple copies of the specimen. The examining attorney should enter a Note to the File in the record indicating which classes the specimen supports.
See TMEP §§1403-1403.06 regarding the requirements for and examination of multiple-class applications.
See 37 C.F.R. §2.86(e) and TMEP §1104.10(b)(v) and §1109.09(b) regarding specimens for multiple-class amendments to allege use and statements of use.
In an application, allegation of use, affidavit of use under 15 U.S.C. §1058 or §1141k of the Trademark Act (§8 affidavit or §71 affidavit), or response to an Office action, the specimens must generally be submitted through the Trademark Electronic Application System (TEAS) in a file format designated as acceptable by the USPTO. See 37 C.F.R. §§2.56(d), 2.161(g), 7.37(g). See TMEP §904.03(d) regarding specimens submitted in electronic and digital media and §904.03(f) regarding specimens for sound marks. If the nature of the specimen is unclear, the applicant should describe what it is and how it is used.
Sometimes, although the submission indicates that a specimen is included, the specimen is not visible in the record due to a technical problem that occurred during its submission. In this situation, the examining attorney should first send an email to the TEAS@uspto.gov mailbox to ask whether the problem can be fixed by uploading the file again. If it cannot, the examining attorney must request that the applicant submit: (1) the same specimen (or a true copy) that was attached to the original TEAS submission; and (2) a statement by the person who transmitted the original TEAS submission that the specimen being submitted is a true copy of the specimen originally filed through TEAS. This statement does not have to be verified. Alternatively, the applicant may submit a different specimen from that initially filed, together with an affidavit or declaration of use of the substitute specimen. See TMEP §904.05 regarding the requirements for an affidavit or declaration supporting use of substitute specimens.
Exceptions to the Requirement to Submit Specimens through TEAS. Specimens must be submitted electronically through TEAS unless:
See TMEP §301.02(c) regarding exempt filers under 37 C.F.R. §2.23 and §301.02(e) and §1709 regarding petitions to the Director under 37 C.F.R. §2.147 to accept paper submissions.
If a specimen is filed in connection with a permitted paper filing (see TMEP §301.01), the specimen(s) should be flat and no larger than 8½ inches wide by 11 inches long. The USPTO may create a photocopy or other reproduction for the official record and destroy the original.
Reproductions of specimens submitted by applicants (e.g., photographs or photocopies) must show the entire specimen or enough of the specimen that the nature of the specimen, the mark, and the good or service with which the mark is used are identifiable. 37 C.F.R. §2.56(c). The mark and all other pertinent written matter on the submitted specimen should be clear and legible. For example, product photographs appearing on folders or brochures that show the trademark on the applicant's goods are acceptable reproductions. It is permissible to show the complete product in one photograph and the written matter in another, so that the written matter will be legible, or to show different views of a product either in a single photograph or in separate photographs.
If a web page printout is submitted as a display associated with the goods, it must include the URL for the web page and the date the page was accessed or printed. Id. Trademark owners can submit the URL and date directly on the specimen web page itself or elsewhere in the document with which the specimen is submitted or in a verified statement under 37 C.F.R §2.20 or 28 U.S.C. §1746 in a later-filed response. This information may not be entered via examiner’s amendment. If the web page printout includes a photograph of the applied-for mark appearing on the goods or on packaging for the goods that would otherwise be acceptable as a specimen of use for goods, it need not include the URL and access or print date.
See TMEP §904.02(c)(ii) regarding specimens for marks comprising color.
If paper filing has not been permitted but an actual physical specimen is necessary for examination, the examining attorney may require an actual physical specimen under 37 C.F.R. §2.56(a) and §2.61(b). See TMEP §904.03(m) regarding specimens for scent and flavor marks.
