If your company filed an “intent to use” application and received a “Notice of Allowance” then, congratulations, the USPTO has initially approved the application for registration and no third-parties have opposed the application during the Opposition Period.
The final step is to file proof of use in the form of a ‘Statement of Use’ filing. However, before your company files ‘proof of use,’ you must make sure the filing has everything it needs to properly show bona fide use in commerce under U.S. trademark law. Otherwise, it may mean the invalidation of the underlying trademark application.
That being said, what happens when your company files a Statement of Use and receives an Office Action that says “Specimen Required”?
This article will provide an overview of the “improper specimen” refusal at the Statement of Use stage and provide a few criteria for when your application may be salvageable or when refiling is the only safe answer.
As a reminder, each applicant’s situation is different and there is no one-size-fits-all approach to responding to an Office Action. This is not meant to be legal advice for your specific situation. Always contact a lawyer before making legal decisions.
The ‘Improper Specimen’ Refusal
If an applicant files a Statement of Use and receives an Office Action, it may look like this:
The Examining Attorney will provide a detailed explanation of the refusal. For example, if applicant submitted a website showing a product, they might receive this refusal:
Registration is refused because the webpage specimen is not an acceptable display associated with the goods and appears to be mere advertising material. See TMEP §904.07(a). The specimen, thus, fails to show the applied-for mark in use in commerce. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §2.56(a).
If an applicant receives this notice, they will have several options. However, one thing an applicant cannot do is withdraw a Statement of Use, so it is crucial for the filer to analyze whether the specimen is sufficient before making a filing that cannot be withdrawn. See 37 C.F.R. §2.88(f); TMEP §1109.17.
So what are the options?
One. If time is left before the original Statement of Use is due, immediately file an “insurance extension.”
The first thing an applicant should do is check the “Notice of Allowance” date. To do this, applicant should go to tmsearch.uspto.gov and search for their trademark, or enter their serial number into tsdr.uspto.gov to pull up the Trademark Status & Document Retrieval (TSDR) record.
Next go to the Documents tab and identify the date of the Notice of Allowance.
Add six months to that date. In the above example, the deadline would be October 10, 2018.
If the applicant has filed any extensions, add 6 more months for each extension filed.
This is the final due date for the Notice of Allowance.
If the applicant receives the Office Action specimen refusal before this date, they should immediately file an “insurance” extension or speak to an attorney who can make this filing before the deadline.
An “insurance” extension is a one-time extension to give applicant’s more time to cure possible defects in the application including specimen refusals.
By filing an insurance extension, applicant is given the chance to amend their packaging, websites, or other specimens to meet the USPTO’s standards and re-file their Statement of Use filing. If the new filing meets the USPTO’s requirement, the application will proceed to registration.
Example: XY Corp. is issued a Notice of Allowance for their COOL WOW! Trademark on July 1, 2018. On September 1, 2018, XY Corp. submits a Statement of Use with a picture of a product that did not meet the standards of the USPTO. XY Corp. receives an Office Action from the USPTO on November 1, 2018. It can file for an ‘insurance’ extension, giving it until July 1, 2019 to fix the issue and provide the USPTO with new specimens showing the trademark properly used in commerce in the United States.
Example: AB LLC is issued a Notice of Allowance for its SUPERCHALLENGEMAX trademark on July 1, 2018. On December 15, 2018, AB LLC submits a Statement of Use with a picture of a product that did not meet the standards of the USPTO. AB LLC receives an Office Action from the USPTO on January 5th, 2019. AB LLC can no longer file an insurance extension and must (if it has it) file a replacement specimen that was in use on or before January 1, 2019 (the deadline to file the Statement of Use.)
Two. If the deadline to file the Statement of Use has passed, know your options and know the requirements.
If applicant is out of time and cannot file an insurance extension, there is still options, but they are more limited.