To register your trademark with the U.S. Trademark Office, you have to submit a “specimen” showing:
- the trademark
- used on or in connection with
- the goods or services.
Lots of people find specimens confusing. Let’s see if I can help with that.
Specimens of things you can touch are pretty straightforward: You submit a picture of the thing or the thing’s package. The picture above has images that could work as specimens for 34 different trademarks.*
But what kind of specimen does the Trademark Office want for something you can’t photograph, like computer software?
We used to submit pictures of the disc. Here’s the specimen submitted by AOL for software in 2006.
Today, most software is either downloaded or SaaS, so what do we use now?
To the right is an excellent specimen for the trademark QUICKBOOKS for SaaS:
- QUICKBOOKS is clearly visible.
- It’s a sign-in page so it shows “use.”
- It’s clear that QUICKBOOKS is a trademark for SaaS.
Here’s an excellent specimen for ZYNGA for downloadable software:
- The word ZYNGA is clearly visible.
- It’s an actual screen shot from a phone so it shows “use.”
- It’s clear this is a mobile software app.
This is NOT an acceptable specimen for KISI for software. The trademark KISI doesn’t appear anywhere.
This is NOT an acceptable specimen for MINECRAFT for software:
- It’s not clearly in “use”. This could just be an ad for a game that’s going to be released next month.
- It’s not clear it’s software. This could be a board game.
You gotta have all three: The trademark; in use; for the goods and services in your application. If you’re missing any one of those requirements, it won’t work as a specimen.
*Here’s the list.
- Revlon® for hairbrushes
- Aveeno® in plain font for skin lotion
- Aveeno® in stylized font for skin lotion
- Active Naturals® for skin lotion
- Scotch® for tape
- The tartan pattern used by Scotch brand
- Magic™ used by Scotch brand
- 3M® (on the Scotch brand tape dispenser)
- KleenEARTH® in plain font for scissors
- KleenEARTH® in stylized font for scissors
- The “W with an arrow through it” logo for scissors
- iPhone® for mobile phones
- Semikolon® for paper products
- Amarelli® in plain font for candy
- Amarelli® in stylized font for candy
- Amarelli® in a different stylized font for candy
- Quartet® for markers
- Artgum® in plain font for erasers
- Artgum® in stylized font for erasers
- Prismacolor® for erasers
- Expo® in plain font for markers
- Expo® in stylized font for markers
- Pentel® in plain font for erasers
- Pentel® in stylized font for erasers
- Hi-Polymer® for erasers
- Mead® for envelopes
- Paperpro® for staplers
- Bobino® for cord holders
- Swingline® in plain font for hole-punchers
- Swingline® in stylized font for hole-punchers
- Krazy® for adhesives
- Gold® for batteries
- Leatherman® for tools
- Quartet® for erasers
If I had been more careful with way I oriented the stuff, there would have been 6 more:
- Bic® in plain font for markers
- Bic® in stylized font for markers
- Quartet® for markers
- Enduraglide® for markers
- Twinings® in plain font for tea
- Twinings® in stylized font for tea