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               Patent Attorneys   Trademark Attorneys

                             Dallas Texas USA

 
ACCEPTABLE TRADEMARK SPECIMENS 
To be acceptable for trademark registration purposes, a specimen must show the mark as used on or in connection with "goods" (products) sold in commerce that is regulated by Congress, namely interstate, territorial, and commerce between the United States and a foreign country. 

The manner of trademark use on a specimen must be such that potential customers would readily understand the trademark as identifying and distinguishing the applicant's goods and indicating their source.

A single specimen as currently being used in commerce is required in an application to register a trademark on the Principal Register of the United States Trademark Office.

These items are acceptable specimens for trademark registration purposes: 

  • a label or tag on which the mark is imprinted and that can be attached or otherwise affixed to containers or packaging in which the product is sold or shipped;
  • a label, tag or decal that can be attached or otherwise affixed to the product itself;
  • photographs or digital images of an actual product on which the trademark is imprinted or engraved;
  • a product package or shipping container on which the mark is imprinted by metal stamping; by a rubber stamp; or it may be inked on by using a stencil or template;
  • photographs of a product package or shipping container on which the mark is displayed;
  • photographs of a static display in which an actual product is exhibited along with a sign or poster on which the mark is displayed to customers, for example at a trade show or in a customer show room;
  • signs or posters on which the mark is prominently displayed in connection with an exhibition or demonstration of the product at a trade show or in a customer show room;
  • a packing slip or insert on which the mark is imprinted, where the packing slip or insert can be taped, tied or otherwise stuck onto or inside of the product or product packaging and which accompanies the product as it is shipped, and is not merely advertising, for example a product slip showing neck size and sleeve length for an item of clothing such as a shirt that is enclosed within a transparent wrapper; 
  • point of sale display materials, for example a poster or placard on which the mark is imprinted and that is displayed with the product on a counter top  or display rack at the point of purchase;
  • a catalog order sheet on which the mark is displayed along with an image of the product, in close association with price and ordering instructions, for example a catalog sheet for carpeting that is cut from a roll;
  • a photograph of a display screen projecting the identifying trademark of a computer program;
  • a CD jacket or CD label on which the mark is displayed, for a computer program or other digital content stored on the CD;
  • a photograph of a of a frame of a movie or video tape bearing the mark;
  • for downloadable computer software, a digital image of a screen display that shows use of the mark on an Internet website, along with purchase instructions and way to download the software;
  • for bulk commodities transported by truck, a photograph of a truck on which the trademark is displayed;
  • instruction sheets and instruction manuals on which the mark is imprinted and which accompanies the product when it is sold, for example, computer software; and
  • a digital image of a website page that displays a product, and provides a means of ordering the product, can constitute a "display associated with the goods," as long as the mark appears on the web page in a manner in which the mark is associated with the goods, and the web page provides a means for ordering the product.

NOT ACCEPTABLE AS TRADEMARK SPECIMENS:

  • advertising, flyers, leaflets, direct mail cards, circulars and brochures; price lists; order forms; announcements; publicity releases; listings in trade directories; business cards; and materials used for the purpose of conducting internal business such as invoices, bills of lading, waybills, inventory sheets, warranties and business letterhead stationery;  and shopping bags and other packaging materials bearing the name of a retail store and used by the store merely for packaging items of sold merchandise.

DEFINITIONS:  "commerce"

“Interstate commerce" refers to buying and selling products, and selling or advertising services, across state borders. 

A more formal definition of "interstate commerce" is: commerce between any combination of states, territories, and possessions of the United States, including the District of Columbia. 

The phrase "foreign commerce" means commerce between any state, territory or possession of the United States and a foreign country. 

"Territorial commerce" is commerce within a territory of the United States (e.g., Guam, Puerto Rico, American Samoa, the United States Virgin Islands) or between the United States and a territory of the United States.

A purely intrastate use ordinarily does not provide a basis for federal trademark registration. However, if the intrastate transaction directly affects a type of commerce that Congress may regulate, this constitutes use in commerce.  For example, consider a OEM branded component that is sold to an in-state customer, where the customer specifies certification or calibration, and the OEM ships the branded component to an out-of-state vendor who performs the certification/calibration and then returns the modified component to the OEM or customer.  This transaction involves shipment of the branded product across state lines, and so qualifies as "use in commerce" for trademark registration purposes.

Contact us to schedule a confidential meeting with our trademark attorneys.

                                        

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