BASIS FOR FILING FOR REGISTRATION
A trademark registration application must be accompanied by a proper “Basis for filing” such an application. The basis can either be that the proposed mark is currently being used in commerce or that the applicant intends to use the mark in the near future. For showing current use, the mark is shown as used on product containers, labels, tags etc. or shown as being used in the advertising of services. A mark which has no current use or intended use may not be registered by the USPTO.
WHEN IS A SPECIMEN NEEDED?
A specimen of the mark being used is required to be submitted in situations where the basis of filing for registration is the current use of a mark or the intent to use the mark. The stage and time of submitting a specimen differs with the basis for filing for registration. It is needed to present a real-life evidence or proof of the mark being used in connection with specific goods/ services.
HOW TO SELECT A PROPER SPECIMEN?
The goods/ services in respect of which a mark is required to be shown must be the goods/ services intended for public use or those present in the public domain. A clear picture of the proposed mark being used on the container of detergent powder(goods) would count as a proper specimen. On the other hand, the proposed mark affixed on a business brochure would be an improper specimen. If an application for registration has been filed in multiple classes of goods, then at least one specimen for each class of goods would be required to be submitted.
If a product is being sold online, screenshots of such use also serve as proper specimens where the product and the trademark are clearly visible. In case the proposed mark is a sound mark, a specimen must be submitted consisting of a sufficient portion of the audio/ video content to depict how such a sound mark is being used in connection with the particular goods/ services.
In case of depicting use of a mark in connection with services, the advertising material available in relation to such services may serve as a proper specimen. A radio or a television commercial is also treated as a proper specimen by the USPTO.
While selecting a specimen, one should be mindful of the drawing of the trademark submitted with the application for registration. The mark shown in specimen must be the same. The specimen must be capable of depicting the use of the mark in such a manner that the consumers associate the mark directly with the goods or services. The specimen must also include the URL and the date on which the webpage was accessed or printed by the applicant.
It is highly likely that a specimen such as the proposed mark shown on the packaging of products (fries in the picture shown) is accepted as a proper specimen. This is an image where both the product and the mark are clearly visible. As a consumer, a person may easily understand that the mark is being used in connection with the product inside the package.
CAN A SPECIMEN BE REJECTED?
In case a specimen is not in accordance with the standard laid down by the USPTO, the specimen will be rejected. A specimen must show the manner in which a mark is seen by the public. If color is a feature of the mark, or if the mark consists solely of color, the specimen must show use of the color.
All the requirements related to a trademark and the provisions laid down in the Trademark Manual of Examining Procedure (TMEP) must be carefully studied and followed while submitting a specimen. It is advisable to hire services of expert legal professionals or attorneys for submission of perfect specimens in an effective manner. Prodigy Legal is a firm with substantial experience in the arena of trademarks, thus it provides you with a team of expert legal professional who assist you throughout the registration process in a hassle-free manner.
About the Author
Isha Kapoor is a young lawyer with passion for law and dispute resolution along with a deep interest in human rights and Intellectual Property Rights. During her law school career, she has interned at the offices of advocates practicing at district courts of Delhi, High Courts and the Supreme Court of India. Along with this, she has interned at the National Human Rights Commission and also has to her credit, a paper published on the Rights of Muslim Women in India.