904.04    Material Appropriate as Specimens for Trademarks

For a trademark application under §1(a) of the Trademark Act or an amendment to allege use or statement of use in an application under §1(b) of the Act, the specimen must show the mark as used on or in connection with the goods in commerce.  A trademark specimen should be a label, tag, or container for the goods, or a display associated with the goods.  37 C.F.R. §2.56(b)(1).  A photocopy or other reproduction of a specimen of the mark as actually used on or in connection with the goods is acceptable.  37 C.F.R. §2.56(c).

The Office may accept another document related to the goods or the sale of the goods when it is not possible to place the mark on the goods, packaging, or displays associated with the goods.  15 U.S.C. §1127 (definition of “use in commerce”); 37 C.F.R. §2.56(b)(1).  This provision is not intended as a general alternative to submitting labels, tags, containers or displays associated with the goods; it applies only to situations when the nature of the goods makes use on these items impracticable.  A mere assertion of impracticability may not suffice to establish that such use is impracticable; rather, the record must indicate that the goods are in fact of such a nature.  For example, it may be impracticable to place the mark on the goods or packaging for the goods if the goods are natural gas, grain that is sold in bulk, or chemicals that are transported only in tanker cars. 

A photocopy of the drawing required by 37 C.F.R. §2.51 is not a proper specimen.  37 C.F.R. §2.56(c).  Similarly, the specimen may not be a “picture” of the mark, such as an artist’s drawing or a printer’s proof that merely illustrates what the mark looks like and is not actually used on or in connection with the goods in commerce. 

See TMEP §§1301.04 et seq. regarding service mark specimens, TMEP §1304.09(c) regarding collective membership mark specimens, TMEP §1303.02(b) regarding collective mark specimens, and TMEP §1306.06(c) regarding certification mark specimens. 

904.04(a)    Labels and Tags

In most cases, where the trademark is applied to the goods or the containers for the goods by means of labels, a label is an acceptable specimen. 

Shipping or mailing labels may be accepted if they are affixed to the goods or to the containers for the goods and if proper trademark usage is shown.  Electronic Communications, Inc. v. Electronic Components for Industry Co., 443 F.2d 487, 170 USPQ 118 (8th Cir. 1971), cert. denied 404 U.S. 833 (1971); In re A.S. Beck Shoe Corp., 161 USPQ 168 (TTAB 1969).  They are not acceptable if the mark as shown is merely used as a trade name and not as a trademark.  An example of this is the use of the term solely as a return address.  Bookbinder’s Sea Food House, Inc. v. Bookbinder’s Restaurant, Inc., 118 USPQ 318 (Comm’r Pats. 1958); I. & B. Cohen Bomzon & Co., Inc. v. Biltmore Industries, Inc., 22 USPQ 257 (Comm’r Pats. 1934).  See TMEP §1202.01 regarding trade name refusals. 

In connection with labels whose appearance suggests that they are only for temporary use, the examining attorney may consider it necessary to make further inquiry under 37 C.F.R. §2.61(b) in order to properly examine the application.  A response to the inquiry may include additional specimens if labels of a more permanent nature have by that time been adopted.  House of Worsted-Tex, Inc. v. Deering Milliken & Co., Inc., 102 USPQ 446 (Comm’r Pats. 1954), aff’d, 233 F.2d 333, 110 USPQ 44 (C.C.P.A. 1956).

904.04(b)    Stampings

Stamping a trademark on the goods, on the container, or on tags or labels attached to the goods or containers, is a proper method of trademark affixation.  See In re Crucible Steel Co. of America, 150 USPQ 757 (TTAB 1966).  The trademark may be imprinted in the body of the goods, as with metal stamping; it may be applied by a rubber stamp; or it may be inked on by using a stencil or template.

When a trademark is used in this manner, facsimiles comprising sheets of paper or other materials on which impressions of the trademark are stamped or stencilled are normally acceptable as specimens (see TMEP §904.08 regarding facsimile specimens). 

When the specimen consists of a stamp on paper, the applicant must explain the nature of the specimen and how it is used.

904.04(c)    Commercial Packaging

The terminology “applied to the containers for the goods” means applied to any type of commercial packaging that is normal for the particular goods as they move in trade.  Thus, a showing of the trademark on the normal commercial package for the particular goods is an acceptable specimen.  For example, gasoline pumps are normal containers or “packaging” for gasoline.

A specimen showing use of the trademark on a vehicle in which the goods are marketed to the relevant purchasers may constitute use of the mark on a container for the goods, if this is the normal mode of use of a mark for the particular goods.  In re E.A. Miller & Sons Packing Co., Inc., 225 USPQ 592 (TTAB 1985).  But see In re Lyndale Farm, 186 F.2d 723, 88 USPQ 377 (C.C.P.A. 1951). 

904.04(d)    Specimens for Trademarks Identifying Computer Programs, Movies or Video Tapes [R-1]

The computer program, video tape, and movie industries have adopted the practice of applying trademarks that are visible only when the goods, i.e., programs or movies, are displayed on a screen (perhaps, for example, on the first several frames of a movie).

An acceptable specimen might be a photograph of a display screen projecting the identifying trademark of a computer program, or a photograph of a frame(s) of a movie or video tape bearing the mark.  It is not necessary that purchasers see the mark prior to purchasing the goods, so long as the mark is applied to the goods or their containers, or to a display associated with the goods, and the goods are sold or transported in commerce.  In re Brown Jordan Co., 219 USPQ 375 (TTAB 1983) (stamping the mark after purchase of the goods, on a tag attached to the goods that are later transported in commerce, held sufficient). 

For downloadable computer software, the applicant may submit a specimen that shows use of the mark on an Internet website. However, such a specimen is acceptable only if the specimen itself indicates that the user can download the software from the website (e.g., if the specimen shows a download button). If the website simply advertises the software without providing a way to download it, the specimen is unacceptable.

904.05    Material Not Appropriate as Specimens for Trademarks

Advertising material is generally not acceptable as a specimen for goods.  Any material whose function is merely to tell the prospective purchaser about the goods, or to promote the sale of the goods, is unacceptable to support trademark use.  Similarly, informational inserts are generally not acceptable to show trademark use.  In re MediaShare Corp., 43 USPQ2d 1304 (TTAB 1997); In re Schiapparelli Searle, 26 USPQ2d 1520 (TTAB 1993); In re Drilco Industrial Inc., 15 USPQ2d 1671 (TTAB 1990); In re ITT Rayonier Inc., 208 USPQ 86 (TTAB 1980); In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979).  However, an instruction sheet may be an acceptable specimen.  In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984).  See TMEP §904.07 regarding package inserts. 

The following types of items are generally considered advertising, and unless they comprise point-of-sale material, are not acceptable as specimens of use on goods:  advertising circulars and brochures; price lists; announcements; publicity releases; listings in trade directories; and business cards.  Moreover, material used by the applicant to conduct its internal business is unacceptable as a specimen of use on goods.  These materials include all papers whose sole function is to carry out the applicant’s business dealings, such as invoices, bill heads, waybills, warranties and business stationery.  See In re Chicago Rawhide Mfg. Co., 455 F.2d 563, 173 USPQ 8 (C.C.P.A. 1972); In re Bright of America, supra; Varian Associates v. IMAC Corp., 160 USPQ 283 (N.D. Ill. 1968); Upco Co. v. Speed Crete of La., Inc., 154 USPQ 555 (TTAB 1967); Dynacolor Corp. v. Beckman & Whitley, Inc., 134 USPQ 410 (TTAB 1962); Pendleton Woolen Mills v. Eloesser-Heynemann Co., 133 USPQ 211 (TTAB 1962); Boss Co. v. Homemaker Rugs, Inc., 117 USPQ 255 (N.D. Ill. 1958).  As to display of trademarks on company uniforms, see In re McDonald’s Corp., 199 USPQ 702 (TTAB 1978); Toro Manufacturing Corp. v. John B. Stetson Co., 161 USPQ 749 (TTAB 1969). 

Bags and other packaging materials bearing the name of a retail store and used by the store merely for packaging items of sold merchandise are not acceptable to show trademark use of the store name for the products sold by the store (e.g., bags at cash register).  When used in this manner, the name merely identifies the store.  See In re Pennsylvania Fashion Factory, Inc., 198 USPQ 568 (TTAB 1978), aff’d, 588 F.2d 1343, 200 USPQ 140 (C.C.P.A. 1978). 

904.06    Displays as Specimens for Trademarks

A display must be associated directly with the goods offered for sale.  It must bear the trademark prominently.  However, it is not necessary that the display be in close proximity to the goods.  See In re Marriott Corp., 459 F.2d 525, 173 USPQ 799 (C.C.P.A. 1972); Lands’ End Inc. v. Manbeck, 797 F. Supp. 511, 24 USPQ2d 1314 (E.D. Va. 1992).

Displays associated with the goods essentially comprise point-of-sale material, such as banners, shelf-talkers, window displays, menus and similar devices.

These items must be designed to catch the attention of purchasers and prospective purchasers as an inducement to make a sale.  Further, the display must predominantly display the trademark in question and associate it with, or relate it to, the goods.  The display must be related to the sale of the goods so that an association of the two is inevitable.  See In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979), and cases cited therein.  See also In re ITT Rayonier Inc., 208 USPQ 86 (TTAB 1980).  Cf. In re Shipley Co. Inc., 230 USPQ 691 (TTAB 1986); In re Jones, 216 USPQ 328 (TTAB 1982).

Folders and brochures that describe goods and their characteristics or serve as advertising literature are not per se “displays.”  In re Schiapparelli Searle, 26 USPQ2d 1520 (TTAB 1993); In re Drilco Industrial Inc., 15 USPQ2d 1671 (TTAB 1990).  In order to rely on such materials as specimens, an applicant must submit evidence of point-of-sale presentation.  See In re Ancha Electronics Inc., 1 USPQ2d 1318 (TTAB 1986); In re Columbia Chase Corp., 215 USPQ 478 (TTAB 1982).  See TMEP §904.06(a) regarding the criteria by which a catalog or other advertising may constitute a display associated with the goods.

An infomercial was held to be a display associated with the goods, where the goods were shown either immediately before or immediately after the trademark was displayed, and the information on how to order the goods was given within a reasonable time after the goods were shown.  The Board found that the infomercial created an association between the trademark and the goods, and the test for constituting a display associated with the goods was therefore satisfied.  In re Hydron Technologies, Inc., 51 USPQ2d 1531 (TTAB 1999). 

904.06(a)    Catalogs as Specimens for Trademarks

In appropriate cases, catalog specimens are acceptable specimens of trademark use.  Lands’ End Inc. v. Manbeck, 797 F. Supp. 511, 24 USPQ2d 1314 (E.D. Va. 1992).  In that case, the applicant had applied to register “KETCH” for purses.  The specimen was a catalog page that included a picture of the goods and, below the picture, the mark and a description of the goods.  The Court stated, “The alleged trademark ‘KETCH’ appears prominently in large bold lettering on the display of purses in the Lands’ End specimen in a manner which closely associates the term with the purses.”  24 USPQ2d at 1315.

The Court determined that the catalog was not mere advertising and that it met the relevant criteria for displays associated with the goods.  The Court evaluated the catalog specimen as follows:

A customer can identify a listing and make a decision to purchase by filling out the sales form and sending it in or by calling in a purchase by phone.  A customer can easily associate the product with the word “KETCH” in the display....  The point of sale nature of this display, when combined with the prominent display of the alleged mark with the product, leads this court to conclude that this mark constitutes a display associated with the goods. 

24 USPQ2d at 1316.

Accordingly, examining attorneys should accept any catalog or similar specimen as a display associated with the goods, provided:  (1) it includes a picture of the relevant goods; (2) it shows the mark sufficiently near the picture of the goods to associate the mark with the goods; and (3) it includes the information necessary to order the goods, (e.g., a phone number, mailing address, or e-mail address).  Any form of advertising that satisfies these criteria should be construed as a display associated with the goods.  It is not necessary that the specimen list the price of the goods.

904.07    Package Inserts as Specimens for Trademarks

If material inserted in a package with the goods is merely advertising material, then it is not acceptable as a specimen of use on or in connection with the goods.  Material that is only advertising does not necessarily cease to be advertising because it is placed inside a package.

Materials such as invoices, announcements, order forms, bills of lading, leaflets, brochures, printed advertising material, catalogs, catalog sheets, circulars, publicity releases, and the like, are not acceptable specimens to show use on goods.  See In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979).

However, if printed matter included with the goods functions as a part of the goods, such as a manual that is part of a kit for assembling the product, then placement of the mark on that printed matter does show use on the goods.  In re Ultraflight Inc., 221 USPQ 903, 906 (TTAB 1984) (“We believe the instruction manual is as much a part of applicant’s goods as are the various parts that are used to build the gliders.  Application of the mark to the manual of assembly instructions, then, must be considered affixation to the goods.”). 

904.08    Facsimiles as Specimens

Actual specimens are preferred if they are available and not “bulky” (see TMEP 904.03 regarding bulky specimens).  However, a photograph, photocopy or other reproduction of a specimen of the mark as used on or in connection with the goods, or in the sale or advertising of the services, is acceptable.  37 C.F.R. §2.56(c).  The applicant should submit facsimiles if actual specimens are too bulky to fit in the file. 

Facsimiles should show the whole article to which the mark is applied, or enough of the article so that the nature of the article can be identified.  The mark and all other pertinent written matter on the article should be clear and legible.  It is permissible to show the complete article in one photograph and the written matter in another, so that the written matter will be legible, or to show different views of an article either in a single photograph or in separate photographs.

If color is a feature of the mark, the applicant should submit facsimiles made by color photography, or by any process that reproduces in color.  See TMEP §904.02(a).

Product photographs appearing on folders or brochures that show the trademark on the goods are acceptable facsimiles.

If necessary, the examining attorney may require one actual specimen for examination purposes, under 37 C.F.R. §2.61(b). 

A copy or reproduction of the drawing is not an acceptable specimen.  37 C.F.R. §2.56(c).