Introduction
For more information on what a trademark is, and what sorts of things can be trademarked, check out our blog found here. For information on “likelihood of confusion” feel free to read our blog post found here. This blog will be specifically about “specimens” that are required with a trademark application. What constitutes an acceptable specimen varies based on the individual class selected. This blog will help you understand the best practices when it comes to specimens and your trademark applications.
What is a “specimen”
Put simply, a specimen is an image or demonstration of a marks use the marketplace for goods and services. This could be a photo, video or, in some rare cases, a physical object that is submitted to the USPTO for evaluation. In virtually every case, a specimen must be demonstrative of an actual object, and cannot be a computer generated rendering. For example, if you are making a brand of T-Shirts, you cannot submit a computer generated image of what you label inside the shirt will look like, you need to submit a photo of an actual shirt with the actual label in it.
What is a class?
A “Class” in the world of trademarks is short for a classification of a good or service. This is to mean that goods and services are grouped into broader categories for the purposes of organization. Trademarks are class specific. This is to mean that when you file an application for a trademark, you have to identify the types of goods or services you are using the mark to identify. For example, when you think “NIKE” you think apparel and/or shoes. Later, you might think of the Nike+ app, or a coaching service. When Nike, Inc. originally filed for its trademark, it did not automatically receive protection across all of these product or service types. It had to file additional applications, specimens, and further develop the fame of its brand before receiving the broader protection it now receives. You can review detailed information on what class a good or service may fall into by visiting the WIPO (World Intellectual Property Organization) website.
Classes matter when considering a specimen. Why? Because you buy goods and services differently. The way you buy or use a phone application is completely different than the way you would ordinarily buy a car. Yes, you can now do nearly everything online, but the USPTO does not assume this fact as of the time this blog was written. It looks more to the nature of the good or service, than to the way someone MAY consume it.
What does this mean for me?
While your attorney assisting you with your application will likely have a conversation with you about your specific application, you can use this blog to be prepared. Assuming you are intending to file an “in use” application (meaning you get an official registration certificate at the end), specimens will be required at the time you file your application. Being prepared with these can help streamline your application process with your attorney, and the USPTO, sometimes cutting a month off of the total time required to prosecute the application.
Can you give me some examples?
Sure thing! I’ve provided two common classes below (one “good” and one “service”) with some examples of acceptable specimens. Those examples would likely apply to other types of goods and services as well. These are examples only, and each specimen will ultimately be reviewed by your attorney, and the USPTO before determine its acceptability.
IC Class 25 - Clothing (Goods)
Images of your clothing with the tag affixed to the garment (Neck/Shoulder blade area usually).
Images of your clothing with hang tags attached
Images of your clothing with stickers attached
Images of your clothing under a sign with the brand name
Images of your website/store with the name clearly visible.
IC Class - Education/Entertainment (Service)
Images of your website
Images of a Billboard or signage advertising your business
Images of business cards
Images of rack cards
Images of magazine ads
Images of newspaper articles