You’ll receive a trademark specimen refusal if the specimens you submitted to the United States Patent and Trademark Office (USPTO) are inappropriate or insufficient to demonstrate use of your trademark in connection with the products and/or services listed in your trademark application. If the specimens don’t meet the USPTO’s strict requirements, the examining attorney will issue a trademark office action explaining why the specimens cannot be accepted.
When Should I Expect to Receive a Trademark Specimen Refusal?
The examining attorney will issue an office action with a specimen refusal if:
- You submit improper specimens with a trademark application filed under Section 1(a) (use in commerce)
- You submit improper specimens with the Statement of Use
- You submit improper specimens with the Amendment to Allege Use
After your trademark is registered, the USPTO will issue a post-registration office action containing a specimen refusal if:
- You submit improper specimens with a trademark maintenance document (i.e. a Section 8 Declaration of Use or a Section 71 Declaration of Use)
- You submit improper specimens with the Section 8 and 9 Renewal
What Are the Options for Overcoming a Specimen Refusal?
Your options for attempting to overcome a specimen refusal depend on the document with which you submitted the specimens. Let’s address each one separately:
Trademark Application Filed Under Section 1(a)
If you receive a specimen refusal after filing a trademark application under Section 1(a), you can do one of the following:
- Option #1 – Present arguments and evidence as to why the specimens are acceptable. If the examining attorney doesn’t find your arguments and evidence persuasive, you’ll receive a final office action. At that point, you can either file a trademark appeal, or you can proceed with Option #2 or #3.
- Option #2 – Submit substitute specimens. The substitute specimens must have been in existence and in use prior to the filing date of the application.
- Option #3 – Amend your application to Section 1(b) (intent to use). This will necessitate filing the Statement of Use or an Amendment to Allege Use later in the registration process. However, please note that this option is not available if your trademark is only eligible for registration on the Supplemental Register.
Statement of Use
If you receive a specimen refusal after filing the Statement of Use, here are your three options:
- Option #1 – Present arguments and evidence as to why the specimens are acceptable. If the examining attorney doesn’t find your arguments and evidence persuasive, you’ll receive a final office action. At that point, you can either file a trademark appeal, or you can proceed with Option #2 or #3.
- Option #2 – Submit substitute specimens. The substitute specimens must have been in existence and in use prior to the expiration of the six-month period for filing the Statement of Use.
- Option #3 – If there’s still time remaining in the six-month period in which the Statement of Use was filed, you can file what’s called an “insurance” Request for an Extension of Time. This would give you until the expiration of the following six-month period to file a new Statement of Use and submit new specimens (which could be developed and put in use during the six-month period). Please note that no further extension requests may be filed, and if you have already been granted five extensions, you may not file an “insurance” extension.
Amendment to Allege Use
If you receive a specimen refusal after filing the Amendment to Allege Use, you can do one of the following:
- Option #1 – Present arguments and evidence as to why the specimens are acceptable. If the examining attorney doesn’t find your arguments and evidence persuasive, you’ll receive a final office action. At that point, you can either file a trademark appeal, or you can proceed with Option #2 or #3.
- Option #2 – Amend your trademark application back to Section 1(b) (intent to use). However, please note that this option is not available if your trademark is only eligible for registration on the Supplemental Register.
- Option #3 – Submit substitute specimens. The substitute specimens must have been in existence and in use prior to the filing date of the Amendment to Allege Use.
Trademark Registration Maintenance or Renewal Document
If you receive a specimen refusal after filing a trademark registration maintenance or renewal document, you have three options:
- Option #1 – Present arguments and evidence as to why the specimens are acceptable. If the post-registration staff member doesn’t find your arguments and evidence persuasive, you’ll receive an office action maintaining the refusal. At that point, you can file a Petition to the Director for review of the staff member’s specimen refusal.
- Option #2 – Submit substitute specimens. If you filed the maintenance or renewal document before the grace period, then the substitute specimens must have been in existence and in use prior to the beginning of the grace period. On the other hand, if you filed the maintenance or renewal document during the grace period, then the substitute specimens must have been in existence and in use prior to the expiration of the grace period.
- Option #3 – If there’s still time remaining in the grace period, you can file a band new maintenance or renewal document with new specimens (which could have been developed and put in use during the grace period).
What If I Can’t Overcome the Refusal?
If you can’t overcome the specimen refusal, or you fail to respond to the office action by the deadline, your trademark application will go abandoned or your trademark registration will be canceled.
Did You Receive a Trademark Specimen Refusal?
I’m experienced US trademark attorney Morris Turek. If you’ve received a specimen refusal and aren’t quite sure about the best way to handle the rejection, please contact me right away for your no-charge consultation. You can send an email to morris@yourtrademarkattorney.com, call me at (314) 749-4059, or just use the contact form located toward the bottom of this page. I look forward to speaking with you soon.