How to Fix a Trademark Office Action Requiring a Substitute Specimen
Learn how to respond to a USPTO trademark office action requiring a substitute specimen. Avoid rejection and protect your brand with Lin IP, LLC
When you file a trademark application with the United States Patent and Trademark Office (USPTO), you may receive a trademark office action. One of the most common reasons for refusal is that your submitted specimen was rejected. In this case, the USPTO requires a substitute specimen to prove your mark is being used in commerce.
If you’ve received a USPTO specimen refusal, don’t worry. With the right approach, you can respond effectively and keep your trademark registration moving forward.
Understanding Trademark Specimens
A trademark specimen shows how consumers actually encounter your brand.
For goods: Acceptable specimens include product labels, tags, packaging, or e-commerce website listings that show the mark with ordering details.
For services: Acceptable specimens include brochures, ads, websites, or social media pages that connect the mark to your services.
Most refusals happen when the specimen does not clearly show use in commerce or does not tie the mark directly to the goods or services.
How to Fix a Trademark Specimen Refusal
Review the Office Action – Carefully read why the USPTO examiner found the specimen unacceptable.
Gather Evidence of Use – For goods, collect product photos, packaging, or website sales pages. For services, gather dated ads, brochures, or website screenshots.
Include Required Details – For website specimens, always provide the URL and access date. For brochures, include proof of distribution before the filing date.
Submit a Verified Declaration – State that the substitute specimen was in actual use in commerce on or before the relevant filing date.
Consult a Trademark Attorney – Professional guidance can prevent mistakes and improve your chance of acceptance.
Frequently Asked Questions
Q1: What is a substitute specimen in trademark law?
A substitute specimen is new evidence submitted to the USPTO showing actual use of your mark after your original specimen was refused.
Q2: Can a website screenshot be used as a specimen?
Yes, if the page shows the mark with the goods or services and includes ordering information. Be sure to include the URL and date.
Q3: Are brochures acceptable as trademark specimens?
Yes, for services. They must clearly connect the mark to the services offered and ideally include proof of circulation.
Q4: What happens if I don’t respond to a specimen refusal?
If you fail to respond, your trademark application may be abandoned, meaning you lose your filing and must start over.
Conclusion: Get Help Fixing Your Trademark Office Action
Receiving a USPTO trademark rejection for a specimen can feel discouraging, but it is a problem that can be fixed. By reviewing the office action, collecting acceptable evidence, and submitting a proper substitute specimen with a verified declaration, you can keep your trademark application moving forward.
If you need assistance responding to a trademark office action or preparing a strong substitute specimen, contact Lin IP, LLC at office@liniplaw.com. Our experienced attorneys can guide you through the trademark registration process and help protect your brand.
