How to Overcome Specimen Refusals

Help From the USPTO On Specimen Refusals

(Which may be Ornamental Refusals or Functionality Refusals or Others)

The USPTO offers this new (22Feb2013) general purpose advice from their web site at: http://www.uspto.gov/trademarks/law/specimen.jsp:


 "Specimen Refusal" and How to Overcome This Refusal

What is a "Specimen Refusal"?


The USPTO issues a specimen refusal when your sample of how you use your applied-for mark (the “specimen”) does not actually show the mark in use in commerce for your particular goods or a specific international class of goods identified in the application, notice of allowance, or allegation of use.   Note that this refusal never issues for applications filed under Section 44 or 66(a) of the Trademark Act, because those applications do not have specimens.


How Can I Overcome This Refusal?

Below are the two possible response options for overcoming a specimen refusal.  


(1) Submitting a different specimen (a verified “substitute” specimen) that was in use in commerce at least as early as the filing date of the application (or prior to the filing of an amendment to allege use; or prior to the expiration of the deadline for filing a statement of use) and that shows proper trademark use of the same mark for each international class identified in the application, notice of allowance, or allegation of use.


NOTE:  You may have to amend the dates of use if the substitute specimen was in use in commerce on different dates than those in the application or amendment to allege use/statement of use.


Examples of the type of specimens normally acceptable for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  Webpages are acceptable specimens for goods when they include a picture or textual description of the goods closely associated with the mark and sufficient information to order those goods (e.g., a visible weblink to order the goods, an offer to accept orders via phone or e-mail).


For more information on substitute specimens, see 37 C.F.R. §§2.59(a), 2.71(c); TMEP §§904.05,§904.03 et seq.


 "Ornamental Refusal" and How to Overcome This Refusal

What is an "Ornamental Refusal"?

From http://www.uspto.gov/trademarks/law/ornamental.jsp


An ornamental refusal is when the USPTO refuses registration of an applied-for mark because the sample of how the mark is used (the “specimen”) or other information in the record shows the mark appearing in an ornamental or decorative manner on applicant’s goods.  For example, a repeated flower pattern on china is generally considered to be ornamental use, not trademark use.  A purchaser of those goods would not understand that the flower pattern is intended to identify the applicant as the source of the goods, but rather would see that pattern only as an ornamentation or decoration on the goods, on packaging, or in advertising.


For more information, see Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451, 1454-55 (TTAB 1987) (holding an applied-for mark consisting of a floral pattern design of morning glories and leaves for tableware to be nondistinctive and merely a decorative pattern with no trademark significance); TMEP §§904.07(b), 1202.03 et seq.


How Can I Overcome This Refusal?

Below are possible response options for overcoming an ornamental refusal.  WARNING: Response options (1) and (5) are not appropriate for applications filed under Section 44 or 66(a) of the Trademark Act.  Option (2) is also not appropriate for an application filed solely under Section 66(a).


NOTE: You should respond using the Trademark Electronic Application System (TEAS) “Response to Office action” (ROA) form (available at http://teasroa.uspto.gov/roa/), which automatically provides any required statement and supporting declaration language referenced in the Office action.


(1) Submitting a different specimen (a verified “substitute” specimen) that was in use in commerce at least as early as the filing date of the application (or prior to the filing of an amendment to allege use; or prior to the expiration of the deadline for filing a statement of use) and that shows proper trademark use of the same mark for each international class identified in the application, notice of allowance, or allegation of use.                                                 


NOTE:  You may have to amend the dates of use if the substitute specimen was in use in commerce on different dates than those in the application or amendment to allege use/statement of use.


Examples of the type of specimens normally acceptable for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  Webpages are acceptable specimens for goods when they include a picture or textual description of the goods closely associated with the mark and sufficient information to order those goods (e.g., a visible weblink to order the goods, an offer to accept orders via phone or e-mail).


For more information on substitute specimens, see 37 C.F.R. §§2.59(a), 2.71(c); TMEP §§904.05,§904.03 et seq.

TEAS ROA form instructions: Answer “Yes” to form wizard question #2.  In the “Classification and Listing of Goods/Services” section, scroll down to “Specimen File” and use the “Click here to Attach Specimen(s)” button to upload the JPG/PDF image file of the specimen.  The size cannot exceed 5 megabytes per attachment.  Enter the description of the specimen and check the box related to this statement: "The substitute (or new, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application" [for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use].  For technical assistance, contact TEAS@uspto.gov.


 (2) Amending the application from the Principal Register to the Supplemental Register.  The Supplemental Register is a second trademark register where trademarks can be registered that are not yet eligible for registration on the Principal Register, but may, over time, become a source indicator.  Marks registered on the Supplemental Register, like those registered on the Principal Register, are protected against conflicting marks in later-filed USPTO applications.  However, Supplemental Register registrations do not receive the same legal advantages and presumptions of Principal Register registrations.


For more information on the Supplemental Register, see 15 U.S.C. §1094; 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816.

TEAS ROA form instructions: Answer “Yes” to form wizard question #3 and then check the box for the “Supplemental Register” in the “Additional Statements” section of the form.  For technical assistance, contact TEAS@uspto.gov.


 (3) Submitting actual evidence that the applied-for mark has acquired distinctiveness under Section 2(f) in connection with applicant’s goods.  In other words, because of the extensive use and promotion of the mark, consumers now directly associate the mark with the applicant as the source of those goods.  Note: Long-term use alone is generally not sufficient to show acquired distinctiveness for marks that are merely ornamental.


Acceptable evidence of use and promotion can include:


(a) advertising and promotional materials that specifically show or promote the applied-for mark in use as a trademark and source-identifier;


(b) dollar figures for advertising devoted to such promotion;


(c) dealer and consumer statements indicating recognition of the applied-for mark as a trademark;


(d) other evidence that shows consumer recognition of the applied-for mark as a trademark for applicant’s goods.


NOTE:  For applications filed under Section 44 or 66(a), when providing evidence of long-term use, an applicant may rely only on use in commerce that the U.S. Congress may regulate.  Use solely in a foreign country or between two foreign countries never supports evidence of acquired distinctiveness in the United States.


For more information on Section 2(f), see 37 C.F.R. §2.41(a); TMEP §§1202.03(d), 1212.06 et seq.

TEAS ROA form instructions: Answer “Yes” to form wizard question #3 and then check the box for “§2(f), based on evidence.”   Use the “Click here” button to attach JPG/PDF image files of the §2(f) evidence.  For technical assistance, contact TEAS@uspto.gov.


 (4) Submitting actual evidence of applicant’s use of the mark on goods or in connection with services that differ from the goods listed in the application to establish that applicant’s use is an indicator of secondary source for applicant’s goods.  This evidence can include other trademark applications or registrations for the same mark for different goods/services or evidence of actual use of the mark on other goods/services.  For example, a university that provides educational services could apply for its name on the front of t-shirts.  While use on the front of a t-shirt may not be considered acceptable trademark use, the university could provide a service mark registration or other evidence to show that it provides educational services as evidence of secondary source for the t-shirts to overcome the refusal.


For more information on secondary source, see TMEP §1202.03(c).

TEAS ROA form instructions: Answer “Yes” to form wizard question #1.  Use the first “Click here” button to enter an argument as to why the mark is an indicator of secondary source and the second “Click here” button to attach JPG/PDF image files of the relevant evidence.  For technical assistance, contact TEAS@uspto.gov.


 (5) Amending your filing basis to intent to use under Section 1(b) to overcome the ornamentation refusal, if this refusal is based solely on the specimen of record.  If you have filed an amendment to allege use (AAU), you may withdraw the AAU; the AAU fee will not be refunded.  However, amending to an intent-to-use basis is not an option if you have filed a statement of use (SOU) after issuance of the notice of allowance.  You may not withdraw an SOU.  NOTE: If you amend to an intent-to-use basis or withdraw the AAU, registration may not be granted until you amend the application back to use in commerce under Section 1(a) by filing an acceptable allegation of use (another AAU or an SOU) with (1) a proper specimen that does not show ornamental use and (2) the required fee.  If you submit the same specimen, the examining attorney will issue the same ornamental refusal again.


For more information on amending the basis, see 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §§806.03(c), 1103.



Does Not Function Refusals-Office Action(s) from USPTO

There are two basic possibilities: No Objections- the Trademark examiner allows the mark (no Office Action) and it is Published for Opposition; or Refusal-examiner refuses the mark for not meeting requirements for federal registration and issues an Office Action giving the applicant a chance to respond to issues raised. Some actual redacted refusals for trademarks that do not “function as a mark are shown below.

Applicants (or their representative) must address each issue raised by the examining attorney and responses to office actions (ROA) must be received within 6 months from the mailing date on the office action. If applicants (or their representatives) do not submit a timely response to an office action, their applications will be declared abandoned.

If the response does not overcome all rejections, the examining attorney will issue another refusal or a final refusal. [Some trademark applications take years to cycle through all the rejections and replies.]

An examiner may suggest registration on the Supplemental Register as an alternative to the Principal Register to overcome a failure to function as a trademark or other reasons. See Comparison of Principal Register and Supplemental Register. Please note that a Supplemental Registration is a significant loss of rights over a Principal Registration and that many refusals can be overcome with the correct responses.

To attempt to overcome a final refusal, the applicant may, for an additional fee, appeal to the Trademark Trial and Appeal Board (TTAB), an administrative tribunal within the USPTO.


For Oppositions based on Merely Descriptive trademark applications, see Merely Descriptive Oppositions.


Example of Actual (redacted) USPTO Statutory Refusals

These are actual “failure to function” refusals from the USPTO. Even though the examiners often suggest ways that the applicants may overcome the refusals, the applicants were unable to overcome all the refusals and the marks were all abandoned after these or after several other refusals.


Sections 1, 2 and 45 - Failure to Function

Refusal—Title of a Single Work

 Registration is refused because the proposed mark, as used on the specimen of record, is the title of a single creative work, namely, the title of a specific CD, and thus fails to function as a trademark for such goods.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §1051, 1052 and 1127; In re Cooper, 254 F.2d 611, 117 USPQ 396 (C.C.P.A. 1958), cert. denied, 358 U.S. 840, 119 USPQ 501 (1958); In re Hal Leonard Publishing Corp., 15 USPQ2d 1574 (TTAB 1990); In re Scholastic Inc., 223 USPQ 431 (TTAB 1984); TMEP §1202.08.

 Applicant is advised that the name of a series of creative works may be registrable if the designation serves to identify and distinguish the source of the goods.  In re Scholastic Inc., 23 USPQ2d 1774 (TTAB 1992).  Therefore, if applicant uses the mark to identify a series, rather than a single work, then applicant should provide such evidence for the record so this refusal can be withdrawn.  Evidence of a series includes copies of multiple book covers or packaging for prerecorded works that show the mark as a source-identifier for the series as well as show the mark as distinguishable from the individual titles of the works.

 Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 Tradename Usage Failure

In the initial office action (as to the statement of use) dated June  13, 200x, the examining attorney refused registration because the proposed mark, as used on the specimen of record, is used only as a trade name to identify applicant’s business and does not function as a trademark to identify and distinguish applicant’s goods from those of others and to indicate their source.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052 1127; see In re Walker Process Equip., Inc., 233 F.2d 329, 110 USPQ 41 (C.C.P.A. 1956); TMEP §1202.01.  Although a designation may function as both a trade name and a trademark, the Trademark Act does not provide for registration of matter that functions solely as a trade name.  In re Diamond Hill Farms, 32 USPQ2d 1383, 1384 (TTAB 1994); In re Univar Corp., 20 USPQ2d 1865, 1867 (TTAB 1991).

By way of response, the applicant argues use of the mark shows source indicating, trademark usage.  Specifically notes the wording XXXXX BRAND appears on a packaging label in which the goods are sold.  However, the fact that the proposed mark appears on packaging does not render trade name matter a trademark.  The determination of whether a trade name also functions as a trademark is based on a consideration of the manner in which the proposed mark is used and the probable impact on purchasers, as evidenced by the specimen(s) and any other information of record. Diamond Hill Farms, 32 USPQ2d at 1384.  The specimen shows the proposed mark used only to identify the applicant’s company and company address, using the same nondescript font for each.  The proposed mark is only used in this regard and is not used in such a manner as to distinguish itself as source indicator of the goods.  TMEP section 1212.01.

The applicant further urges that the use of the wording BRAND shows source indicating use.  However, the term BRAND is defined as a “trademark or distinctive name identifying a product or a manufacturer.”  See the attached entry from The American Heritage® Dictionary of the English Language, Fourth Edition.   As such the term may identify a company or manufacturer, that is, trade name usage, as well as a product, that is, trademark usage.

As shown on the specimen, with the wording in a small nondescript font in a corner of the label, between more the more prominent display of the net weight and a product serial number of some sort, in lettering smaller than the extensive and comparatively more prominent list of product ingredients, the wording can only be seen as trade name usage.

The applicant may overcome this refusal by submitting a substitute specimen showing proper trademark usage for each class of goods verified with an affidavit or signed declaration under 37 C.F.R. §2.20.  Pending receipt of the same, the trade name failure to function refusal is maintained and made FINAL.

Sections 1, 2 and 45 - Failure to Function

Registration is refused because the proposed mark solely identifies a particular character and does not function as a trademark or service mark for the identified services.  Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127; TMEP §§1301.02 et seq.; In re Hechinger Investment Co. of Delaware Inc., 24 USPQ2d 1057 (TTAB 1991); In re McDonald’s Corp., 229 USPQ 555 (TTAB 1985); In re Whataburger Systems, Inc., 209 USPQ 429 (TTAB 1980); In re Caserta, 46 USPQ2d 1088 (TTAB 1988); see also In re D.C. Comics, Inc. 689 F.2d 1042, 215 USPQ 394 (C.C.P.A. 1982) and Paramount Pictures Corporation v. Romulan Invasions, 7 USPQ2d 1897 (TTAB 1988); TMEP §1301.02(b).

The proposed mark is the design of a cartoon raccoon with its name “XXXXX XXXXX” and the specimen shows the proposed mark on the album cover.  According to the specimen, the proposed mark is being used solely to identify a character and does not serve to identify applicant’s goods or services. 

A character is registrable as a mark only where the record shows that it is also used in a manner that would be perceived by consumers as identifying and distinguishing the services in addition to identifying the character.  In re Hechinger Investment Co. of Delaware Inc., 24 USPQ2d at 1059.


Sections 1, 2 and 45 - Failure to Function

Mark on Specimen Does Not Function as a Mark; Only Names the Band

Registration is refused because the proposed mark, as used on the specimen of record, solely identifies the featured performers, that is, the band, on the sound recordings and does not function as a trademark for the goods themselves.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127; In re Spirer, 225 USPQ 693 (TTAB 1985); Cf. In re Polar Music International AB, 714 F.2d 1567, 221 USPQ 315 (Fed. Cir. 1983); TMEP §1202.09(a).  In other words, the name on the specimen for the recording is simply the name of the band. 

Applicant may respond to this refusal by (1) submitting evidence that the mark has been used on at least two recordings, and (2) amending the identification of goods to state that the sound recordings comprise a series, i.e., series of pre-recorded compact discs, Digital Versatile Disk, audio cassettes, video cassettes, and phonograph records, all featuring music and/or musical performances; Downloadable musical sound recordings; Downloadable video recordings featuring music and/or musical performances, in Class 9.

Sections 1, 2 and 45 Ornamental Refusal

Registration is refused on the Principal Register because the proposed mark, as used on the specimen of record, is a decorative or ornamental feature of the goods and would not be perceived as a mark by the purchasing public because it does not function as a trademark to identify and distinguish the applicant’s goods from those of others and to indicate their source.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127; See In re Owens-Corning Fiberglass Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985); In re David Crystal, Inc., 296 F.2d 771, 132 USPQ 1 (C.C.P.A. 1961); In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451 (TTAB 1987); TMEP §§1202.03 et seq.  The specimen of record consists of a photograph of a t-shirt, and the proposed mark is ornamental as used on the specimen because the mark is emblazoned across the chest of the shirt.

 In connection with wording that is ornamental, “the size, location, dominance, and significance of the alleged mark as applied to the goods” are all relevant factors to consider in determining whether the proposed mark is inherently distinctive. In re Pro-Line Corp., 28 USPQ2d 1141, 1142 (TTAB 1993); In re Astro-Gods Inc., 223 USPQ 621, 623 (TTAB 1984).  Although there is no prescribed method or place for affixation of a mark to goods, the location of a mark on the goods “is part of the environment in which the [mark] is perceived by the public and … may influence how [the mark] is perceived.”  In re Tilcon Warren Inc., 221 USPQ 86, 88 (TTAB 1984); see In re Paramount Pictures Corp., 213 USPQ 1111, 1115 (TTAB 1982).  Thus, where consumers have been conditioned to recognize trademarks in a certain location, as on the breast area of a shirt, ornamental matter placed in a different location is less likely to be perceived as an indication of source.  See TMEP §1202.03(b).

As to the size of the proposed mark appearing on the specimens, the larger the display relative to the size of the goods, the more likely that consumers will not view the ornamental matter as a mark.  See, e.g., In re Dimitri’s Inc., 9 USPQ2d 1666, 1667 (TTAB 1988) (SUMO merely ornamental in part because the wording “appears in large lettering across the top-center portion of the T-shirts and caps”); International Order of Job’s Daughters v. Lindberg and Co., 633 F.2d 912, 208 USPQ 718 (9th Cir. 1980), cert denied 452 U.S. 941 (1982) (prominent display on jewelry was evidence that the proposed mark was being used in a non-trademark fashion).

The applicant may overcome the above-stated ornamental refusal by doing one of the following, as appropriate:

(1)   Claiming acquired distinctiveness by submitting evidence that the proposed mark has become distinctive of the applicant’s goods in commerce under Trademark Act Section 2(f), 15 U.S.C. §1052(f).  Evidence may consist of examples of advertising and promotional materials that specifically promote the subject matter for which registration is sought as a mark, dollar figures for advertising devoted to such promotion, dealer and consumer statements of recognition of the subject matter as a mark and any other evidence that establishes recognition of the matter as a mark for the goods.  See TMEP §§1202.03(d) and 1212.06 et seq; or

(2)   Submitting evidence that the proposed mark is an indicator of secondary source or sponsorship for the identified goods.  University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385, 1405 (TTAB 1994); In re Olin Corp., 181 USPQ 182 (TTAB 1982).  That is, the applicant may submit evidence showing that the proposed mark would be recognized as a trademark or service mark through the applicant’s use of the proposed mark with goods or services other than those identified here.  In re Original Red Plate Co., 223 USPQ 836, 837 (TTAB 1984).  The applicant must establish that, as a result of this use on other goods or services, the public would recognize the applicant as the secondary source of, or sponsor for, the identified goods.  See TMEP §1202.03(c); or

(3)   Submitting a substitute specimen that shows proper non-ornamental trademark use, along with a statement that “the substitute specimen was in use in commerce at least as early as the application filing date,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(a); or

(4)   Amending the application to seek registration on the Supplemental Register. Trademark Act Section 23, 15 U.S.C. §1091; 37 C.F.R. §§2.47 and 2.75(a); TMEP §§801.02(b), 815 and 816 et seq.

Mark does not Function as a Trademark for Applicant’s Goods

Registration is refused because the proposed mark, as used on the specimen of record, does not function as a trademark to indicate the source of the identified goods.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127; In re Remington Products Inc., 3 USPQ2d 1714 (TTAB 1987); TMEP §§1202 et seq.

The specimen of use consists of an advertisement for the goods.  The mark does not function as a trademark on the specimen because there is no showing that the mark is used with the goods or as a display associated with the sale of the goods.  Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other printed advertising material, while normally acceptable for showing use in connection with services, generally are not acceptable specimens for showing trademark use in connection with goods. In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979); See In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984); TMEP §§904.05 and 904.07.  Examples of acceptable specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale.  TMEP §§904.04 et seq.

This refusal will be withdrawn if applicant submits both (1) a substitute specimen showing use as a trademark, and (2) a statement that “the substitute specimen was in use in commerce at least as early as the application filing date,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §§2.56 and 2.59(a); TMEP §904.09.




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