By James Juo.

A specimen showing the manner in which a trademark is seen by the public is necessary to obtain a federal trademark registration with the U.S. Patent and Trademark Office (“USPTO”). TMEP 904. Section 1(a) of the Trademark Act requires a 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. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a).

“[A] mark shall be deemed to be in use in commerce—(1) on goods when—(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto . . . and (B) the goods are sold or transported in commerce.” Section 45 of the Trademark Act, 15 U.S.C. § 1127. Trademark Rule 2.56(b)(1), 37 CFR § 2.56(b)(1), which pertains to specimens for goods, provides in part that: “A trademark specimen must show use of the mark on the goods, on containers or packaging for the goods, on labels or tags affixed to the goods, or on a display associated with the goods.”

A digitally created or altered specimen, such as a mock-up, an artist's rendering, a printer's proof, or an image that has been digitally created or altered to include the mark, will not be considered  acceptable to show actual use of the mark on or in connection with the goods or services in commerce. TMEP 904.04(a); In re Chica, 84 USPQ2d 1845, 1848 (TTAB 2007) (holding that “a mere drawing of the goods with an illustration of how the mark may be displayed” was not an acceptable specimen because it did not show actual use in commerce); In re The Signal Cos., 228 USPQ 956, 957-58 n.4 (TTAB 1986) (noting that a printer's proof of an advertisement would not be an acceptable specimen because it is does not show actual use in commerce).

For labels or tags whose appearance suggests that they are not in actual use in commerce, the examining attorney may inquire as to how the specimen is used in order to properly examine the application. 37 C.F.R. §2.61(b); TMEP 904.03(a).

The case of In re E Z Products, Inc., Serial No. 87906813 (TTAB Oct. 21, 2021), presents an example of a label affixed to another label, which was found to be an acceptable specimen.  In connection with a trademark application for the SPEED EZ mark covering “cleaning brushes for use on automobiles, motorcycles, boats and other vehicles; cleaning brushes for use on wheelchairs; cleaning brushes for use on bicycles,” the applicant submitted a specimen where the wording “SPEED EZ” appears to be a separately printed label placed on an already existing label, which is highlighted in the specimen below.

The examining attorney noted that:

This piece of paper bearing the applied-for mark is not the same shade of white as the rest of the label, cuts off pictorial representations of bubbles on the already existing label, and shows the wording arranged vertically, when all other wording on the labels appears arranged horizontally. Therefore, it appears that the applicant has merely printed the applied-for mark on a piece of paper and attempted to attach it to its current product labels. Thus, the submitted specimen cannot be accepted.

In response, the applicant asserted that “[t]he label is not a piece of paper, but an actual label that is affixed to the tag.” The applicant also argued “[t]here is no rule that says a label
when affixed to the goods cannot cover other graphics (in this case the bubbles), nor is there a rule that says the wording has to be in the same font or match the arrangement of the other wording on the tag.”

The examining attorney rejected the applicant's position, and continued to refuse registration because the packaging has been “altered” with a “subsequent label” where “the applied-for mark appears only on a piece of paper that has been laid on the tag.” The examining attorney emphasized the incongruities in the specimen:

The small piece of paper has uneven sides and curved lines, which cover portions of design elements on the larger label or tag. Moreover, the smaller label creates shadows around all four edges of the label, clearly showing that the applied-for mark is not printed on the larger tag containing the wording EZDETAIL.

After the specimen refusal was made final, the applicant filed a request for reconsideration with a photograph of the goods in the actual sales environment with the label and tags applied, and identifying three locations where the goods are sold. A portion of the photograph is reproduced below with the affixed SPEED EZ label highlighted.

The examining attorney considered the photograph of the goods in actual commerce to be a substitute specimen that was lacking verification, and continued to refuse registration because “the  [originally submitted] specimen does not show actual use of the mark in commerce.”  The applicant did not provide a verification or another substitute specimen, and instead appealed to the Trademark Trial and Appeal Board (“TTAB”).

The TTAB found that “the submitted specimen and the photographs of actual use are consistent and do not contradict each other.” With respect to the issue of affixing a label to tags for the goods, the TTAB noted:

While the mark is not preprinted onto the tag, the fact that Applicant printed a label that it affixed to a preprinted tag is not prohibited nor does it make the specimen a mockup. See In re Chica, Inc., 84 USPQ2d 1845, 1847-48 (TTAB 2007) (temporary nature of specimens is not a characteristic that is “fatal” to registration). See also In re Brown Jordan Co. 219 USPQ 375, 376 (TTAB 1983) (the fact that mark is not stamped on tags affixed to the goods until after order is received is not prohibited).

Finding the submitted stick-on specimen to be acceptable, the TTAB reversed the refusal.

The trademark attorneys at Thomas P. Howard, LLC are experienced at prosecuting trademark applications before the USPTO, as well as enforcing trademarks or defending against infringement claims in litigation nationwide including in Colorado.