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The importance of choosing appropriate specimens cannot be overemphasized. If you want to save money by filing your own application, at least have an attorney review your specimens. In most cases, the choice of specimens is fairly straightforward. Unfortunately, without a legal background, you may not know whether your specimens are the kind that can lead to a rejection by the Trademark Office. If you bring in an attorney to handle the rejection, this will delay your application and cost a lot more than it would have if you simply hired an attorney to review your specimens in the first place. The Trademark Examining Attorney uses your specimens to decide whether a mark qualifies as trademark, whether the mark is actually " used" in a trademark sense, whether the mark is too similar to other marks that it cannot be registered, whether the drawing page submitted with the application is appropriate given the specimen submitted, and whether the type of goods or services claimed in the application are in fact those that are sold. The U.S. Patent and Trademark Office requires three specimens of the trademark as it is used in commerce. The three specimens can be, but need not be, different from one another. For Intent to Use applications, the specimens are not required until filing an Amendment to Allege Use or Statement of Use. For multi-class applications, you must submit separate sets of three specimens for each class, however they may be the same as those submitted for the other classes as long as the specimens reflect use in each class. Acceptable specimens for service marks include items such as advertisements, brochures, billboards, direct mail pieces or menus. Unacceptable specimens for service marks include price lists, invoices, packaging lists, letterhead and business cards. However, in certain circumstances these items may qualify as acceptable specimens if they serve to identify the service provided rather than identify the business itself. For example, letterhead for QWIK J'S GARAGE that has the tag line, "We're 'Qwik' for a reason," would be unacceptable. However the same company's letterhead may be acceptable if "QUIK J's GARAGE" appears next to the tag line, "Fixing American Autos & Trucks." That is because the latter example shows the services provided in association with the name, rather than showing the name for identification purposes only. Trademarks used for selling goods cannot rely on brochures or other advertising for their specimens. Instead, the specimen must show that the mark is affixed to the goods sold. For instance, a photocopy of a bag of cat litter showing the trademark on the packaging itself is an acceptable specimen. Similarly, a photograph of an automobile bearing the "FORD" trademark would serve as a sufficient specimen, as long as the photo clearly showed the mark itself. Unacceptable specimens for goods include: price lists, catalogs, trade directories, publicity releases, invoices, internal memos or other company documents, instruction sheets, letterhead, business cards, bags or boxes to temporarily carry or ship merchandise, such as a grocery bag, or any other item that does not directly show the mark affixed to the goods. For example, while a photograph of a company label stuck onto the goods is acceptable, that same label alone, if sent as the specimen, would be unacceptable. There are many other specimens that may be appropriate, but you should check with an attorney before deviating from those listed above. |