What is a specimen refusal?

If you've received a specimen refusal in your office action, it means the USPTO is denying the registration of your trademark because your specimen of use was insufficient.

Specimen of use proves how your trademark is used to label your goods/services in the marketplace. Photos of products or website screenshots bearing the mark are common examples of specimens.

Common reasons for receiving a specimen refusal include:

• The specimen is illegible.
• The specimen is digitally created or altered and not a real photo or screenshot.
• The mark in the specimen doesn't match the mark filed in the original trademark application.
• The specimen doesn't prove the mark's use in commerce in the applied-for class, which happens when the mark in the specimen labels a product that doesn't belong under the class where the applicant is seeking registration.
• The website specimen for goods doesn't include any means of ordering the goods (relevant for goods, not services).
• The specimen is advertising material and can't prove the goods can actually be purchased by consumers (relevant for goods, not services).
• The website specimen for goods shows the trademark labelling the website and not the goods themselves.
• From the specimen, it's not clear what goods the mark labels and whether they match the goods listed in the trademark application, which happens when the photo is too close up, or the specimen shows closed packaging without any indication of what the product is.
• The way the mark is used makes it seem it's merely a decorative (or "ornamental") element of the goods and not something that can function as a trademark - a sign capable of identifying the source of goods/services. For example, a slogan put on a shirt wouldn't likely be seen by consumers as a brand.

If you receive one of these refusals, you will usually have one of the following options:

• Provide a substitute specimen and a disclaimer stating that it was used in commerce before the deadline.
• If you can't provide a substitute specimen within the specified deadline (which is usually three months), you can switch your filing basis from Use in Commerce to Intent to Use, if applicable.
• If you believe the examiner has made a mistake in their assessment, you can submit a response with an argument supporting your case. We recommend seeking legal assistance for this purpose.
• Abandon the classes where you received the refusal and progress with the others, if applicable.