The Trademark “Specimen”: A Practical Guide to Use-in-Commerce and Intent-to-Use Filings
By Dougherty, Molenda, Solfest, Hills & Bauer P.A.
1. Why the Specimen Matters
In U.S. trademark practice, a specimen is real-world evidence that a mark is actually being used on—or in connection with—goods and services.
Statutory hook: 15 U.S.C. § 1051(a)-(b).
Regulatory framework: 37 C.F.R. § 2.56; Trademark Manual of Examining Procedure (TMEP) §§ 904-904.07.
The specimen is not mere formality; it anchors federal rights to concrete marketplace use and fends off the registration of “phantom” marks that never reach consumers. It’s more than use it or lose it. It’s use it in commerce, or you’ll never get it lawfully registered in the first place.
2. Two Filing Pathways—and Two Specimen Timelines
Filing Bases at a Glance
1. Use in Commerce – § 1(a)
When a specimen is needed: At the time of filing. (If the Examining Attorney refuses the initial specimen, you may submit a replacement within six months.)
Core purpose: To register a mark that is already in bona-fide use across state lines or other U.S. jurisdictions.
2. Intent to Use (ITU) – § 1(b)
When a specimen is needed: Later in the process—either
by filing an Amendment to Allege Use before the application is published, or
by filing a Statement of Use after the USPTO issues a Notice of Allowance.
Core purpose: To lock in a nationwide priority date while the mark is still under development, thereby reserving rights for future commercial use.
3. Understanding “Use in Commerce” (§ 1(a))
Definition of Use
Goods: Placement of the mark on the product, packaging, or associated point-of-sale displays, with the goods transported or sold in interstate commerce (TMEP § 904.03).
Services: Display of the mark in the sale or advertising of the service while the service is actually rendered in interstate commerce (TMEP § 1301.04).
Specimen Requirements
Clear, color images of the mark as encountered by consumers (photo of labeled goods, screenshot of e-commerce product page with shopping-cart feature, etc.).
Must match the applied-for mark exactly (no color swaps or missing design elements).
Why Choose § 1(a)?
Brand already launched and generating sales.
Registration can issue quickly (often 8-12 months).
Strengthens enforcement posture—no “intent to use” vulnerabilities in litigation.
4. Understanding “Intent to Use” (§ 1(b))
Concept of Bona-Fide Intent
The applicant must possess a demonstrable, good-faith plan to bring the mark to market—not a mere idea for future licensing (see M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368 (Fed. Cir. 2015)). Evidence can include business plans, prototypes, supplier contracts, or marketing budgets.
Specimen Timing
Amendment to Allege Use (AAU): Filed any time between application submission and publication.
Statement of Use (SOU): Filed within six months after the USPTO issues a Notice of Allowance; up to five six-month extensions are available (total of three years from Notice of Allowance).
Why Choose § 1(b)?
Locks in a nationwide priority date before launch—valuable where product development is lengthy.
Avoids premature disclosure of packaging/advertising that might evolve.
Provides flexibility, allowing brand owners to assess market viability before incurring nationwide marketing costs.
5. Common Specimen Pitfalls
Website screenshots without purchasing mechanism (goods) or without a service description (services). These don’t work. There must be a purchase mechanism. Think shopping cart.
Digital mock-ups—must show actual use, not renderings.
Hangtags mailed to counsel—need evidence they are affixed to goods offered for sale.
Social media posts lacking a call-to-action or way to order.
Tip: For ITU filings, assemble potential specimens early so you can pivot quickly once the Notice of Allowance arrives.
6. Best Practices for Strong Specimens
Capture context: Include surrounding webpage showing price, “Add to Cart,” and URL/footer.
Maintain consistency: Specimen spelling, punctuation, and design must match the drawing exactly.
Date-stamp and archive: Preserve dated copies; you may need them in enforcement or renewal.
Monitor evolving guidance: The USPTO periodically tightens specimen rules, especially for digital goods and downloadable content.
7. Conclusion
Selecting between a use-based and intent-to-use trademark application is a strategic decision that hinges on the applicant’s commercial readiness, funding horizon, and enforcement posture. Regardless of the path, a clear, compliant specimen is the linchpin that converts a filing into enforceable nationwide rights. Thoughtful planning—grounded in statutory requirements and up-to-date USPTO guidance—ensures that your mark transitions smoothly from concept to protected commercial asset.
Questions about trademark specimens or choosing the optimal filing basis? Our Trademark Protection Attorneys are ready to help.
