Specimen Refused? How to Fix It

Your application was going fine, and then an Office Action arrived saying the specimen is unacceptable. This is one of the most common refusals the USPTO issues, it is usually fixable, and fixing it does not mean starting again.

This post is about the refusal and the response. If what you need first is the basics, what a specimen is and what counts as one for goods and for services, read the specimen guide and come back here.

First, read what was actually refused

Open the Office Action and check three things before you do anything else.

Is the specimen the only issue? Office Actions often bundle a specimen refusal with a goods and services amendment request, a disclaimer requirement, or a likelihood of confusion refusal. Your response has to address every point raised. Answering the specimen and ignoring the disclaimer gets the application abandoned.

Which class is affected? In a multi class application the examining attorney may accept the specimen for one class and refuse it for another. You only need to fix the class that was refused.

What is the deadline? You have three months from the issue date to respond, and you can buy a single three month extension by filing a request and paying the extension fee before the first deadline passes. Applications based on an international registration under Section 66(a) run on a six month clock instead. Miss the deadline and the application goes abandoned, which is recoverable only by a petition to revive at $250 with a good reason.

The refusals we see most, and what each one means

The specimen looks like a mockup. A flat product image on a white background, a label sitting on a plain rectangle, a box rendered at a perfect angle with no shadow. The examining attorney is saying this looks created rather than photographed. Digital printing and print on demand have made this refusal much more common, and the examining attorney can and does search the internet for the same image on a stock template site.

The specimen has been digitally altered. The mark was added to a photograph of a product afterwards. Tell tale signs are a mark that ignores the curve of a bottle, a logo with no lighting on it when everything around it is lit, or pixel edges that do not match the rest of the image.

Ornamental use. The mark appears as decoration rather than as a brand. The classic case is a large slogan or design printed across the chest of a t-shirt. Consumers read that as the reason they bought the shirt, not as the name of the company that made it.

No link between the mark and the goods. For goods, showing the mark somewhere on your website is not enough. The page has to show the mark in a way that associates it with the specific goods, and it has to give the customer a way to buy: a price, an add to cart control, an order form, or ordering instructions. A homepage with a logo and a phone number is a common refusal.

The specimen shows a different mark. You applied for one thing and the specimen shows another. Extra wording, a stylization you did not claim, or a design element that is not on the drawing will all draw this refusal, unless the difference is minor enough that the applied for mark still creates a separate commercial impression.

Advertising for goods. Brochures, flyers, and social media posts advertise goods, but for goods the specimen has to show the mark on the product, on the packaging, on a tag or label, on a display associated with the goods, or on a web page with ordering information. Advertising alone is only enough for services.

A services specimen that does not describe the service. For services the specimen must show the mark used in the sale or advertising of the service, and the material has to make clear what the service is. A logo on a business card with no description of what you do is not enough.

A web page specimen missing its URL or date. This one is purely mechanical, and it is the easiest to get right. See below.

Your three routes out

Almost every specimen refusal is answered in one of three ways.

1. Argue that the specimen is acceptable. Worth doing when the examining attorney has read the specimen too narrowly, for example calling a genuine product photo a mockup, or missing the ordering information that is further down the page. Point to the specific parts of the specimen and explain them. Do not simply assert that it is fine.

2. Submit a substitute specimen. The usual answer. You upload a different specimen showing the same mark on the same goods or services. There is one condition that catches people out: the substitute has to show use that was already happening at the relevant date, and you have to say so in a signed verified statement (see below).

3. Change the basis or the filing. Where no acceptable specimen exists yet, because the product has not shipped, you can amend a Section 1(a) use based application to Section 1(b) intent to use. The application keeps its filing date and moves forward to a Notice of Allowance, and you file the specimen later with a Statement of Use. You pay the intent to use filing fee to make the change, and you will pay the SOU fee later, but you keep your place in line.

The verified statement, and why substitutions fail without it

A substitute specimen has to be supported by a signed statement that the specimen was in use in commerce at least as early as the relevant date. For a use based application, that date is the application filing date. For a Statement of Use or an amendment to allege use, it is the date given in that filing. For a Section 8 declaration, the specimen has to show current use, not use from years ago.

This is where an otherwise good response gets refused a second time. The specimen itself may be perfect, but if the signed statement is missing, or if it is signed by someone with no authority to sign for the owner, the examining attorney will issue the refusal again.

It also means the specimen has to be honest about dates. If the product genuinely did not exist at the filing date, a substitute specimen cannot fix that, and route three above is the correct answer.

Fixing a web page specimen properly

Most modern specimens are screenshots, and most screenshot refusals come down to the same missing pieces.

• Show the full URL. In the browser address bar in the capture, or printed on the page.
• Show the date. The USPTO wants the date you accessed or printed the page. Put it in the capture or state it in the filing. Do not substitute an archive service date for the date you accessed the page.
• For goods, capture the buy control. Price, add to cart, buy now, or clear ordering instructions have to be in the same capture as the mark and the goods. Scrolling past them and cropping them out is what causes the refusal.
• Keep the mark and the goods together. If the mark is in a header 900 pixels above the product, capture both in one continuous image rather than two separate screenshots.
• Print to PDF with headers and footers enabled. Most browsers will then stamp the URL and date on every page automatically, which is the simplest way to satisfy both requirements at once.

Answering an ornamental refusal

Ornamental refusals have their own set of answers, roughly in order of how easy they are:

• Submit a different specimen. A hangtag, a collar or neck label, a small breast pocket placement, or the packaging. Consumers read those placements as brand identification, so they usually clear the refusal without any argument.
• Show secondary source. If the mark is already registered or in use for other goods or services, the same mark on merchandise can be read as pointing back to that source.
• Claim acquired distinctiveness. If the mark has been used long enough and widely enough that buyers recognize it as a brand, you can support that with evidence of sales, advertising, and length of use.
• Move to the Supplemental Register. A fallback that gives you a registration and the right to use the registered symbol, without the presumptions that come with the Principal Register.
• Amend to intent to use and file a proper specimen later.

Before you resubmit, run this check

1. The mark on the specimen matches the mark on your drawing.
2. The specimen shows real use, not a rendering or an altered photo.
3. For goods, the mark, the goods, and the ordering information appear in the same capture.
4. For services, the material describes the service, not just the brand name.
5. Web page specimens carry the URL and the date you accessed or printed the page.
6. The verified statement is included and signed by someone authorized to sign for the owner.
7. Every other point in the Office Action has been answered too.

One more habit that saves a second round: submit more than one acceptable specimen where you have them. If the examining attorney disagrees with one, another is already on file.

Specimen refusals also arrive later in a mark's life, on a Section 8 declaration, where the requirement is current use rather than use at filing. The analysis is the same, but the specimen must be recent.

If you would rather hand this over, our US attorneys review the refusal, pick the route with the best chance of clearing it, prepare the substitute specimen and the verified statement, and file the response. Start at office action response.

Sources

• USPTO: specimens
• Trademark Manual of Examining Procedure
• USPTO: responding to an Office Action