Specimens which show the mark as actually used are required for a trademark application based on use in commerce, allegations of use in an application based on an intent to use, or Declaration of Continued Use or application for trademark renewal.

A specimen is an example of how the mark is used in connection with the goods or services.   Importantly, acceptable specimens for products and services differ. As a general rule, an acceptable specimen for trademark purposes must show use of the mark on the goods, packaging for the goods or displays associated with the goods. Therefore, advertising and promotional items are not normally  acceptable to show use of a trademark on goods. However, these same items are appropriate to show use of the trademark mark in connection with services.

ACCEPTABLE SPECIMENS OF USE FOR GOODS

The following  are some of the items considered appropriate specimens for goods:

• Labels and Tags affixed to the goods or containers for the goods.
• Stampings applied directly on the goods or containers for the goods.
• Commercial Packaging for the goods that is normal for particular trade. (for example a gasoline pump or truck used to transport goods in some cases
•  A photograph or print out of  a display screen of a computer program, or frame of  movie or video tape that bearing the  mark.
• For downloadable computer software, an applicant may submit a specimen that shows use of the mark on an Internet website. Such a specimen is acceptable only if it provides sufficient information to enable the user to download or purchase the software from the website.
•  Displays Associated with Goods such as banners, shelf-talkers, window displays, menus, and similar items.
•  Catalogs may be acceptable if it (1) includes a picture or a sufficient textual description of the relevant goods; (2) shows the mark sufficiently near the picture or textual description of the goods to associate the mark with the goods; and (3) includes the information necessary to order the product
•  Electronic Displays  A website page that displays a product, and provides a means of ordering the product, can constitute a “display associated with the goods,” as long as the mark appears on the web page in a manner in which the mark is associated with the goods, and the web page provides a means for ordering the product
•  Manuals  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.

MATERIAL NOT APPROPRIATE AS SPECIMENS

              Informational Inserts are generally not acceptable to show trademark use;Advertising circulars and brochures; Price lists; Announcements; Press releases; Listings in trade directories; and Business cards and stationary;Invoices; Bill heads,Waybills and Warranties

THE FOLLOWING ITEMS ARE GENERALLY DEEMED ACCEPTABLE SPECIMENS OF USE FOR SERVICES

     Newspaper and magazine advertisements, Promotional materials, Brochures, Billboards, Handbills,Direct-mail leaflets, Menus (for restaurants),Letterhead and invoices may be acceptable service mark specimens if they show the mark and refer to the relevant services

When choosing a trademark or service mark it is important to adopt a name that will be afforded trademark protection.  In order to be registered by the United States Patent and Trademark Office (“USPTO”) a mark must be capable of distinguishing the goods or services from others.  The USPTO examines each trademark application to determine if the mark or logo merits registration. 

Marks are generally classified into the following four categories: Arbitrary, Suggestive, Descriptive and Generic. Terms that are  merely descriptive will usually not be deemed protectable marks because they are not capable of distinguishing one party’s goods or services from another.   Nevertheless, in my experience many trademark owners are initially drawn to terms that describe their particular goods and services. It is natural to want a name or mark to provide information about the nature of one’s business.  I am somewhat chagrinned to admit that even after years preaching the importance of staying away for generic or descriptive marks I had a hard time selecting a distinctive mark for my own business.   

When selecting a mark it is important to recognize that Arbitrary or Fanciful marks are considered the strongest marks and afforded the greatest scope of protection. Arbitrary marks are words or symbols that have no relation to the goods or services (such as Apple® for computers); and fanciful or coined marks (such as Polaroid® for cameras) If, you select an arbitrary or fanciful mark and you will have a greater chance of clearing the mark and obtaining a trademark registration.

Suggestive marks are next in terms of strength and if  cleared ,will usually be  accepted for registration by the USPTO.  Suggestive marks tend to indicate the nature or quality of the goods or services.  Some imagination is required on the part of the consumer to identify the goods or services (such as Greyhound® for bus service). 

 A descriptive mark is one that merely describes or names a characteristic or quality of the goods or services may not be registered  on the Principal Register without showing it has acquired distinctiveness (such as Fruit Cooler for fruit flavored beverages, ).

Generic “marks” are common words used in connection with the product or service and are never registered (such as trademark registration service for registration services, computer for computers, Apples for apples, Restaurant for restaurant services, etc.)

It is important to recognize that a search of the USPTO Database will reveal pending U.S. applications and registrations. However,  it will  not reveal common law trademark, service mark , domain name or trade name rights that might pose significant risks to the use or registration of your mark.  Moreover, the fact that the mark or name has been cleared by the Secretary of State does not mean it is available for use and/or registration.   Failure to conduct a full or comprehensive trademark search may cause you to invest a significant  amount of time and money in promoting a mark, only to learn  that might be confusingly similar to third party mark. It is much easier and less expensive to change your mark, before you commence use!

 Therefore, it is always recommended that a full or comprehensive trademark search be conducted prior to adopting your mark  to ensure, to the extent possible  the availability of  trademark , service mark , name or logo .