The rules regarding specimens (evidence of trademark use)[1] assess whether a trademark applicant is using the mark in a manner that engenders trademark rights.[2] Accordingly, specimens must support the facts alleged in a trademark application. While the analysis can be nuanced, the fundamental requirement is that specimens clearly show a connection between the marks and the goods or services listed in the application. For example, if the applicant is selling canned peas, a photo of a can of peas displaying the mark will establish such a connection because the mark is attached to the goods. Generally, the Trademark Office does not accept advertising materials for goods unless the applicant can meet additional requirements showing a clear association between the mark and the goods.[3], [4] For services, which are intangible by nature, acceptable specimens often include advertising and marketing materials; photographs of business signage or billboards; and materials showing the mark in the sale or advertising and rendering of the services. [5] However, for the Trademark Office to accept these materials, they must create a direct association between the mark and the services described in an application.[6], [7] Two recent cases demonstrate how a specimen can fail to establish such “direct association”—either because the specimen does not align with the services identified in an application, or because the specimen does not adequately link the mark to the services described in the application.
In In re Codify AI, Inc., Serial No. 88917966 (T.T.A.B. May 5, 2025) (not precedential), the applicant appealed to the Board following the Trademark Office’s refusal to register the mark CUT+DRY in Class 35 based on the Office’s view of applicant’s specimen of use. Even though the applicant was in the business of developing and operating online stores for other companies, it described its Class 35 services without distinguishing its own services from those of other companies: “online retail store services featuring a wide variety of consumer goods; providing a website featuring information for consumers in the field of product information relating to food; online retail grocery store services featuring home delivery services.”
As evidence of its mark’s use, the applicant submitted printouts of its website, which explained that it develops online platforms for other businesses that provide online retail stores and information services. The Examining Attorney argued that the specimen did not show the applicant providing online grocery store and information services directly to the general public. The applicant, in turn, contended that the Examining Attorney improperly focused on the end-consumers purchasing goods from the online retail and grocery store platforms developed by the applicant rather than its actual relevant consumers—businesses that engaged the applicant to create online storefronts. Although the TTAB acknowledged the applicant had submitted a specimen that conformed to the applicant’s interpretation of the services described in the application, the Board disagreed with that interpretation and agreed with the Examining Attorney that the relevant services were directed to other companies, and the Board affirmed the refusal of the applicant’s specimen. Describing your actual business with specificity in the application will help avoid this type of refusal. Engaging in discussions before filing an application—covering the services offered, how they will be delivered, and the target customer base—will help ensure that the description of services in the application aligns with how they are presented in advertising.
In the second case, In re Brewhound Coffee-Bar Co., Serial No. 88681779 (T.T.A.B. Mar. 14, 2025) (not precedential), the applicant sought registration of the mark RUFFAREE for “recreational dog park services” in Class 41. To show the use of the mark with its Class 41 services, the applicant submitted the following types of specimens: (1) printouts from the applicant’s website, (2) a magazine advertisement, and (3) photos of an employee t-shirt.
Advertising materials submitted as specimens must refer to the applied-for mark and show use of the mark in a trademark sense. Here, the applicant initially submitted printouts from its website that predominantly displayed its house mark BREW HOUND DOG PARK + BAR (Design) but did not mention its RUFFAREE mark. Even though the applicant’s substitute webpage specimen contained the word “Ruffaree,” the Board observed that the applicant used it to describe an employee’s job title (as a person refereeing dog play). The Board noted similar issues with the applicant’s magazine advertisement because that specimen also used the word Ruffaree descriptively.
With respect to the third type of specimen, the applicant first submitted the photo of a t-shirt spread out on a table. However, after receiving the Examining Attorney’s refusal, the applicant submitted photos of one of its employees wearing the same t-shirt while observing people and their dogs in the applicant’s dog park. Although the Board agreed with the Examining Attorney that the applicant’s first photo failed to create the requisite association, the Board found the second photo (employee wearing the uniform while watching dogs) established the requisite “direct association” between the mark and its services because it showed the use of the mark while rendering the dog park services.
As these cases show, specimens must align with the information provided in the trademark applications. Furthermore, service-mark specimens must be selected with a critical eye, as they must demonstrate either textually or logically a link between the mark and the claimed services.
[1] See T.M.E.P. § 904 generally regarding specimens for goods and § 1301.04 for service-mark specimens.
[2] T.M.E.P. § 904.07(a) provides a non-exhaustive list of circumstances when specimens create “use-in-commerce problems.”
[3] Roux Lab’ys, Inc. v. Clairol, Inc., 427 F.2d 823, 831 (C.C.P.A. 1970).
[4] See T.M.E.P. § 904.03(g) for discussions regarding advertisement and display associated with goods.
[5] T.M.E.P. § 1301.04.
[6] In re Universal Oil Prods. Co., 476 F.2d 653, 177 USPQ 456, 457 (CCPA 1973).
[7] In re JobDiva, Inc., 843 F.3d 936, 121 USPQ2d 1122, 1126 (Fed. Cir. 2016).
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