Information On U.S. Trademark Specimens Of Use, “Actual Use” & “Intent-To-Use” Applications
By Justin M. Jacobson, Esq.

In the United States, trademark rights in a mark are based on “actual use” of the name in commerce; consequently, an owner must actually be utilizing the mark in commerce for the particular goods or services in order to acquire rights in the name (mark).  Thus, in order to protect a name, a federal or state trademark application can be filed with the appropriate state department or the United States Patent and Trademark Office (“U.S.P.T.O.”).  In America, a trademark application can proceed on an “actual-use” or an “intent-to-use” basis; therefore, an application can either be filed for a mark that is currently in use (an “actual use” application) or for one that the owner intends to use (an “intent-to-use” application).

 An “intent-to-use” application is one that is filed prior to actually utilizing a mark in order to “reserve” a particular name for a specific good or service.  The mark must then actually be used in commerce within six months after a Notice of Allowance (“NOA”) is issued by the U.S.P.T.O.  Once a mark is used, a Statement of Use (“SOU”) must be filed with the U.S.P.T.O.  In situations where the trademark owner is not ready to proceed and begin “using” the mark in commerce, they may instead seek and file an extension to lengthen the time period to file the required Statement of Use.  Each extension provides the owner with an additional six (6) month period to begin utilizing the mark and file the necessary document (the Statement of Use).  The time to file a Statement of Use may be extended by the applicant up to five times after the Notice of Allowance is used for additional six (6) month periods.              

In addition to using the mark in commerce, an applicant must also submit a suitable specimen to the U.S.P.T.O. when applying for protection.  An appropriate specimen must be one that depicts the mark being used in commerce for the particular listed good(s).  For example, if a mark is for providing “live performance” services in Class 041, copies of any live performance flyers or advertisements containing the mark could be submitted as specimens.  Additionally, if a mark is being registered in class 025 for clothing items such as t-shirts or pants, a flyer or other advertisement showing the clothing items available for sale with a listed price and a way to purchase them could suffice.   Similar, for class 014 for jewelry, such as bracelets and necklaces, a screen-shot of the product available for sale on an online website or an in-store flyer containing the items and prices may also work.

Furthermore, if an application is for class 009 for providing “downloadable music files” or “downloadable MP3 files,” a screen-shot of the MP3 files available for sale in a digital music platform, such as iTunes or Amazon, might be acceptable as a specimen of use.  A promotional service offering or advertisement listing the offered services is another example of a potential specimen that could be submitted for an application for a mark for the provision of “recording” or “production” services by a musician.  In particular, such specimen should include some contact information and/or pricing, if available and list the offered services (i.e., recording service, production service).  In every case, it is essential that any specimen that is submitted with an application includes the appropriately applied for mark and actually offers the services or goods for sale or the application may be denied. Overall, a party wishing to protect a name that they are currently utilizing or that they desire to use in the future can file a U.S. trademark application on either of these aforementioned bases.  Ultimately, the applicant must actually use the mark in commerce for the listed good, including making the items available for public sale or publicly offering the listed service through some type of service offering or other listing before registration can occur. Once they have used the mark, a “specimen” of use must be submitted to the U.S.P.T.O. as proof of this fact.

This article is not intended as legal advice, as an attorney specializing in the field should be consulted.

© 2019 The Jacobson Firm, P.C.

About the author

Justin M. Jacobson, Esq. - Vice-President, The Jacobson Firm, P.C. - Attorney Specializing in Entertainment, Sports, Esports, Fashion and Art Law. In particular, The Jacobson Firm, P.C. handles Trademarks, Copyrights, Contracts, Estate Planning, Music Business and Brand Development on behalf of creative talent and lifestyle brands.