1604.12 Specimen Showing Current Use of Mark in Commerce

1604.12(a) Specimen for Each Class Required

A §8 affidavit or declaration must include a specimen or facsimile showing current use of the mark for each class of goods or services, unless excusable nonuse is claimed. 15 U.S.C. §1058(b); 37 C.F.R. §2.161(g). When requested by the USPTO, additional specimens must be provided. 37 C.F.R. §2.161(g).

See TMEP §§904.03 et seq. regarding trademark specimens, and TMEP §§1301.04 et seq . regarding service mark specimens.

The specimen must show use of essentially the same mark as the mark shown in the registration, and must be used on or in connection with the goods/services listed in the registration. A specimen that shows use of a materially different mark ( see TMEP §1604.13 ), or shows use of the mark on other goods or services, is unacceptable. An affidavit or declaration that does not include an acceptable specimen for each class of goods/services is deficient. See 37 C.F.R. §2.161(g).

If a single specimen supports multiple classes, the owner may so indicate, and the Post Registration staff need not require multiple copies of the specimen. The Post Registration staff should enter a Note to the File in the record indicating which classes the specimen supports.

Under 37 C.F.R. §2.161(g)(2), the specimen must be flat and no larger than 8½ inches (21.6 cm.) wide by 11.69 inches (29.7 cm.) long. If a specimen exceeds these size requirements, the USPTO will create a facsimile of the specimen that meets the requirements of the rule (i.e., is flat and no larger than 8½ inches wide by 11.69 inches long), put it in the record, and destroy the original bulky specimen. If the copy of the specimen created by the USPTO does not adequately depict the mark, the Post Registration staff will require a substitute specimen that meets the size requirements of the rule, and an affidavit or declaration verifying the use of the substitute specimen.

If the specimen is otherwise deficient, the Post Registration staff will require a substitute specimen, together with an affidavit or declaration that the substitute specimen was in use in commerce on or in connection with the goods or services during the relevant period specified in §8 of the Act. See 37 C.F.R. §2.164; see also TMEP §1604.12(c) regarding substitute specimens.

The USPTO will not return specimens filed with a §8 affidavit or declaration.

1604.12(b) Specimens in Electronically Filed Affidavits or Declarations

If the owner files the §8 affidavit or declaration through TEAS, the owner must submit a digitized image in .jpg or .pdf format. 37 C.F.R. §2.161(g)(3).

Sometimes, no visible specimen is in the record due to a technical problem during submission of the affidavit or declaration. In this situation, the Post Registration staff should first send an e-mail to the TEAS mailbox to ask whether the problem can be fixed by uploading the file again. If it cannot, the Post Registration staff must ask the owner to submit: (1) the specimen (or a facsimile of the specimen) that was attached to the original electronically filed affidavit or declaration; and (2) a statement by the person who transmitted the affidavit or declaration to the USPTO that the specimen being submitted is a true copy of the specimen submitted with the electronically filed affidavit or declaration. This statement does not have to be verified. Alternatively, the owner may submit a new specimen, together with an affidavit or declaration that the substitute specimen was in use in commerce on or in connection with the goods/services during the relevant period specified in §8 of the Act. No deficiency surcharge is required. See TMEP §1604.12(c) regarding the requirements for an affidavit or declaration supporting use of substitute specimens.

The Office prefers that the specimen, whether a true copy of the original or a substitute, be submitted electronically via the Trademark Electronic Application System ("TEAS"). In TEAS, the Response to Office Action form can be accessed by clicking on the link entitled "Response Forms" at http://www.uspto.gov .

1604.12(c) Substitute Specimens

If a specimen for any class is omitted or is deficient, the owner must file a substitute specimen, together with an affidavit or declaration that the substitute specimen was in use in commerce on or in connection with the goods or services during the relevant period specified in §8 of the Act, 15 U.S.C. §1058, as follows:

(1) If the §8 affidavit or declaration was filed during the sixth year after the date of registration or publication under §12(c) of the Act, 15 U.S.C. §1062(c), the affidavit or declaration supporting use of the substitute specimen must state that the substitute specimen was in use in commerce before the expiration of the sixth year after the date of registration or publication under §12(c), if accurate; or
(2) If the §8 affidavit or declaration was filed within one year before the end of any ten-year period after the date of registration, the affidavit or declaration supporting use of the substitute specimen must state that the substitute specimen was in use in commerce within one year before the end of the ten-year period after the date of registration, if accurate; or
(3) If the §8 affidavit or declaration was filed during the grace period, the affidavit or declaration supporting use of the substitute specimen must state that the substitute specimen was in use in commerce before the expiration of the grace period, if accurate.

If the §8 affidavit or declaration was filed during the relevant period specified in §8(a) of the Act (i.e., during the sixth year after the date of registration or publication under §12(c) of the Trademark Act, or within one year before the end of any ten-year period after the date of registration), the substitute specimen may be filed before expiration of the relevant period for no fee, or after expiration of the relevant period with the deficiency surcharge required under §8(c) of the Act. If the §8 affidavit or declaration was filed during the grace period, the substitute specimen may be filed before expiration of the grace period for no fee, or after expiration of the grace period with the deficiency surcharge. See TMEP §1604.04 regarding the deadlines for filing §8 affidavits or declarations, and TMEP §§1604.17 et seq. for information about the procedures, deadlines, and surcharge for correcting deficiencies.

While a substitute specimen and supporting affidavit or declaration may be filed after the expiration of the period specified in §8 of the Act, the supporting affidavit or declaration must attest to use of the specimen within the time period specified in §8 of the Act. Therefore, if the affidavit or declaration supporting the substitute specimen does not state that the specimen was in use in commerce prior to the end of the relevant period specified in §8 of the Act, the USPTO will not accept the affidavit or declaration, and the registration will be cancelled as to any class for which no proper specimen was submitted.

See 37 C.F.R. §2.193(e)(1) and TMEP §611.03(a) regarding the proper person to sign an affidavit or declaration.