What Does Trademark Specimen Refusal By USPTO Mean?

Having a registered trademark is imperative for securing a brand’s identity. The United States Patent and Trademark Office (USPTO) has an important role in this regard since the department is responsible for scrutinizing and processing trademark applications. In the registration procedure, a risk encountered by the applicants is specimen refusal. Now what exactly is specimen refusal? This blog will help you understand that, as well as give you a brief guide on how to overcome this stumbling block.

What Is Trademark Specimen Refusal?

A trademark specimen is a tangible representation of how a trademark is incorporated in commercial usage. A specimen can constitute anything, from a label or tag, or packaging material for the products, or even the business webpage. The job of USPTO is to carefully review these marks and scrutinize that they align with the guidelines provided in the Trademark Manual of Examining Procedure (TMEP).

If the office refuses a specimen, it implies that the evidence submitted in support of the application is not sufficient or does not meet the set criteria. The reasons for refusals could be various, including but not limited to improper display of the mark, no connection between the products or service and the mark, or failure to demonstrate the mark’s use in the business. Below we will explore these reasons in further detail.

Reasons For The Refusal By The Trademark Office:

1. Improper Display of the Mark

The US trademark office has laid out that the displayed mark should be done so in a manner that a link is established between the mark and the goods or services it is representing. The specimen will be refused if it occurs that the mark has been tampered with, insufficiently displayed, or it has been displayed in such a manner that it can’t be clearly identified by the onlooker. 

2. No Connection Between The Products or Service and The Mark 

It is important that your specimen clearly conveys in the application the link between the mark and the services/goods your business is offering. Failure to do so can evidently result in refusal by the trademark office.

3. Failure of Demonstrating the Mark’s Use in the Business  

Your trademark registration is dependent on the actual usage of the mark in the business. If you don’t provide sufficient evidence to prove the usage of the mark, your specimen will be refused for registration. 

How to Overcome a Specimen Refusal?

If you received a refusal notice recently, worry not. You can easily rectify the mistake, as highlighted in the notice, and file a new application. Here are some steps you can take in such a situation.

Thoroughly Review the Refusal Notice  

When you recieve the refusal, you need to carefully review the reasons provided for the office action. Understanding the grounds for refusal for your specimen is crucial for proceeding to the next step, i.e., creating an effective response for the office.

Opt for Professional Advice   

The most invaluable way to go about this situation is to seek advice from a qualified trademark attorney. A professional will be better able to assess the refusal and give you the needed guidance in this regard. Not only this, they can also work over the possible response options for overcoming the rejection. Book a free consultation today with our experienced principal attorney if you recently received a  specimen refusal.

Amend the Deficiencies Present in Your Specimen   

If the grounds of refusal relate to issues in the display of the mark or its linkage with the business, it is necessary that you amend them. This can be done by submitting a substitute specimen which strictly fulfills the stipulated requirements of an acceptable trademark.

Effectively Draft Your Statement of Use 

If the notice cites insufficient evidence for your intent to use as a reason for refusal, it means that you need to provide clear and compelling proof. This can include invoices, the packaging materials you use for your products, or a website listing the services your business provides – in short, anything that would establish the mark’s reach and use in commerce. 

Your Response Must Be Comprehensive

Timely and adequate communication is key. The response you intend to send to the office has to be comprehensive – one which sufficiently addresses all the raised concerns against your applied mark. You should substantiate your response with solid evidence and persuasive arguments. Ensuring professionalism, punctuality, and paying attention to key details has a significant impact on the outcome of your application.   

File for Appeal if Necessary

Despite following the aforementioned steps, there is a chance that the USPTO might uphold its decision. In such a situation, the best available option is to file an appeal on the decision. In this, you will be litigating your case before the Trademark Trial and Appeal Board (TTAB), where all your additional arguments will be heard to refute the refusal.

Conclusion

It is a challenge for businesses looking for protection of their trademark to encounter specimen refusal by the USPTO. The application procedure in itself takes some amount of time, so to be faced with refusal only prolongs the procedure and its time period even more. However, if you gain a clear understanding of the reasons for the refusal of your mark and devise a meticulous strategy to overcome it, you are well on your way of successfully getting your trademark approved.

Getting your trademark registered is pivotal for protecting your brand from any infringment out counterfeit issues. The smooth way to go about this is to hire a professional trademark attorney who will shoulder the entire responsibility from filing the trademark application to getting it approved.  

Book a free consultation today with Drishti Law to seek the services of our experienced principal attorney for any of your specimen refusal issues.