Shipping or mailing labels may be accepted if they are affixed to the goods or to the containers for the goods and if proper trademark usage is shown.   In re A.S. Beck Shoe Corp., 161 USPQ 168 (TTAB 1969); Elec. Commc’ns, Inc. v. Elec. Components for Indus. Co., 443 F.2d 487, 170 USPQ 118 (8th Cir. 1971).  They are not acceptable if the mark as shown is merely used as a trade name and not as a trademark.  An example of this is the use of the term solely as a return address.  In re Supply Guys, Inc., 86 USPQ2d 1488 (TTAB 2008); Bookbinder’s Sea Food House, Inc. v. Bookbinder’s Rest., Inc., 118 USPQ 318 (Comm’r Pats. 1958); I. & B. Cohen Bomzon & Co. v. Biltmore Indus., Inc., 22 USPQ 257 (Comm’r Pats. 1934).  See TMEP §1202.01 regarding trade name refusals.

When a trademark is used in this manner, photographs or facsimiles showing the actual stamping or stenciling are acceptable as specimens.

Compact discs, DVDs, audiotapes, and videotapes may contain files in .jpg, .pdf, .wav, .wmv, .wma, .mp3, .mpg, or .avi format.  The USPTO is unable to review files in any other format. The USPTO prefers that the applicant submit small files of less than two minutes in duration.  Only one specimen should be included on each tape or disc; however, in a multiple-class application, the applicant may include more than one specimen on the same disc or tape.  If the nature of the specimen is unclear, the applicant should explain what it is and how it is used.

This section pertains only to CDs, DVDs, audiotapes, and videotapes attached to paper filings.  Attachments to TEAS filings must be in .jpg or .pdf format.  See 37 C.F.R. §2.56(d)(4); TMEP §904.02(a).

An acceptable specimen might be a photograph or printout of a display screen projecting the identifying trademark for a computer program, or a photograph of a frame(s) of a movie or video bearing the mark.  It is not necessary that purchasers see the mark prior to purchasing the goods, as long as the mark is applied to the goods or their containers, or to a display associated with the goods, and the goods are sold or transported in commerce.  In re Brown Jordan Co., 219 USPQ 375 (TTAB 1983) (holding that stamping the mark after purchase of the goods, on a tag attached to the goods that are later transported in commerce, is sufficient use).

For downloadable computer software, an applicant may submit a specimen that shows use of the mark on an Internet website.  Such a specimen is acceptable only if it creates an association between the mark and software and provides sufficient information to enable the user to download or purchase the software from the website.  See In re Azteca Sys., Inc., 102 USPQ2d 1955 (TTAB 2012). If the website simply advertises the software without providing a way to download, purchase, or order it, the specimen is unacceptable.  See In re Dell Inc., 71 USPQ2d 1725, 1727 (TTAB 2004); see also In re Osterberg, 83 USPQ2d 1220, 1224 (TTAB 2007).  See TMEP §904.03(i) regarding electronic displays as specimens for trademarks.

Similarly, a specimen for audio recordings in Class 9 that shows use of the mark on an internet website must include a “download” or similar link to put the consumer on notice that the identified goods are available for download. Absent such a link or the equivalent thereof, the specimen on its face fails to show use of the mark in commerce for the goods.In re Rogowski, 104 USPQ2d 2012, 2014-15 (TTAB 2012).

For paper filings, specimens for sound marks must be submitted on CDs, DVDs, videotapes, or audiotapes.  See 37 C.F.R. §2.56(d)(3); TMEP §904.03(d).  For TEAS applications under §1(a), the specimen can be attached to the application and must be an electronic file in .wav, .wmv, .wma, .mp3, .mpg, or .avi format.  Audio files should not exceed 5 MB in size, and video files should not exceed 30 MB, because TEAS cannot accommodate larger files. To submit an electronic file in connection with any other TEAS form (e.g., Response to Office Action or Statement of Use/Amendment to Allege Use), the file must be sent after the TEAS document is transmitted, as an attachment to an e-mail message directed to TEAS@uspto.gov, with clear instructions that the electronic file should be associated with “the application filed under U.S. Application Serial No. <specify>.” See In re Powermat Inc., 105 USPQ2d 1789, 1791 (TTAB 2013). Note, however, that audio and video files attached to an e-mail currently cannot exceed 9 MB.

Displays associated with the goods essentially comprise point-of-sale material such as banners, shelf-talkers, window displays, menus, and similar devices.

These items must be designed to catch the attention of purchasers and prospective purchasers as an inducement to make a sale.  Further, the display must prominently display the mark in question and associate it with, or relate it to, the goods.  In re Osterberg, 83 USPQ2d 1220 (TTAB 2007); In re Morganroth, 208 USPQ 284 (TTAB 1980) (purported mark was so obfuscated on the specimen that it was not likely to make any impression on the reader).  The display must be related to the sale of the goods such that an association of the two is inevitable.  See In re Bright of Am., Inc., 205 USPQ 63 (TTAB 1979), and cases cited therein; see also In re ITT Rayonier Inc., 208 USPQ 86 (TTAB 1980); cf. In re Shipley Co., 230 USPQ 691 (TTAB 1986); In re Jones, 216 USPQ 328 (TTAB 1982).

Folders, brochures, or other materials that describe goods and their characteristics or serve as advertising literature are not per se “displays.”  In re Schiapparelli Searle, 26 USPQ2d 1520 (TTAB 1993); In re Drilco Indus. Inc., 15 USPQ2d 1671 (TTAB 1990).  In order to rely on such materials as specimens, an applicant must submit evidence of point-of-sale presentation.  Such evidence must consist of more than an applicant's statement that copies of the material were distributed at sales presentations or tradeshows.  A mere statement that advertising and promotional materials are used in connection with sales presentations is not sufficient, in and of itself, to transform advertising and promotional materials into displays used in association with the goods.  Osterberg, 83 USPQ2d 1220, 1224 (“Applicant's declaration lacks sufficient detail to transform the web page from advertising into a display used in association with the goods.  For example, there is no discussion regarding how the applicant used the web page at sales presentations to make an association between the mark and the products or whether consumers, in fact, associated the mark with the products.  The use of advertising material in connection with the sales of a product does not ipso facto make it a display used in association with the goods sufficient to support technical trademark use for registration.”); see also In re Anpath Grp., Inc., 95 USPQ2d 1377 (TTAB 2010) (holding that pamphlet and flyer listing the URL of applicant’s website and/or a telephone number for contacting sales representatives does not create the same point-of-sale situation as a detailed catalogue, a detailed web page, or a situation where there is the option of placing an order based upon detailed information from the specimen); In re Ancha Elecs. Inc., 1 USPQ2d 1318 (TTAB 1986); (holding that a photograph showing an informational flyer or leaflet clearly depicting the mark and presented on the goods at a trade show exhibit was an acceptable display associated with the goods); In re Columbia Chase Corp., 215 USPQ 478 (TTAB 1982) (holding that folders and brochures describing goods and their characteristics or serving as advertising literature are not displays, and the appearance of marks and product photographs in such literature does not per se amount to use of a mark on displays without evidence of point-of-sale presentation).

An infomercial was held to be a display associated with the goods, where the goods were shown either immediately before or immediately after the trademark was displayed, and the information on how to order the goods was given within a reasonable time after the goods were shown.  The Board found that the infomercial created an association between the trademark and the goods, and the test for constituting a display associated with the goods was, therefore, satisfied.  In re Hydron Techs., Inc., 51 USPQ2d 1531 (TTAB 1999).

The Court determined that the catalog was not mere advertising and that it met the relevant criteria for displays associated with the goods.  The Court evaluated the catalog specimen as follows:

A customer can identify a listing and make a decision to purchase by filling out the sales form and sending it in or by calling in a purchase by phone.  A customer can easily associate the product with the word “KETCH” in the display . . . . The point of sale nature of this display, when combined with the prominent display of the alleged mark with the product, leads this court to conclude that this mark constitutes a display associated with the goods.

24 USPQ2d at 1316.

Accordingly, examining attorneys may accept any catalog or similar specimen as a display associated with the goods, provided that it:  (1)  includes a picture or a sufficient textual description of the relevant goods; (2)  shows the mark in association with the goods; and (3)  includes the information necessary to order the goods (e.g., an order form or a phone number, mailing address, or e-mail address for placing orders).

• (1) contains a picture or textual description of the identified goods;
• (2) shows the mark in association with the goods; and
• (3) provides a means for ordering the identified goods.

See In re Sones, 590 F.3d 1282, 1288, 93 USPQ2d 1118, 1123 (Fed Cir. 2009); In re Azteca Sys., Inc., 102 USPQ2d 1955, 1957-58 (TTAB 2012); In re Dell Inc., 71 USPQ2d 1725, 1727 (TTAB 2004); Lands’ End v. Manbeck, 797 F. Supp. 511, 514, 24 USPQ2d 1314, 1316 (E.D. Va. 1992).  

Generally, a web page will display the trademark in association with a picture of the goods. However, in Sones, the Federal Circuit held that although a visual depiction of the goods “is an important consideration in determining whether a submitted specimen sufficiently associates a mark with the source of the goods,” a picture of the goods on the web page is not mandatory. In re Sones. at 1288, 93 USPQ2d at 1123.  A textual description may suffice where “the actual features or inherent characteristics of the goods are recognizable from the textual description, given that the more standard the product is, the less comprehensive the textual description need be.”  Id. at 1289, 93 USPQ2d at 1124.

Example 1: Mark is associated with the goods, goods are pictured and described, and ordering information is provided.

Mark: LACOSTE

Similarly, a web page from a third–party, social-media website may also be accepted provided the web page satisfies the elements of a display specimen.

However, while a web page display associated with the goods is an acceptable specimen for goods, mere advertising material is not. In re Anpath Grp., 95 USPQ2d 1377, 1380 (TTAB 2010); In re Quantum Foods, Inc., 94 USPQ2d 1375, 1379 (TTAB 2010); In re Osterberg, 83 USPQ2d at 1224; In re Dell Inc., 71 USPQ2d at 1727; In re MediaShare Corp., 43 USPQ2d 1304, 1307 (TTAB 1997). Acceptable web-page displays are not merely advertising, but instead serve as point-of-sale displays, because the website on which the web page appears is, in effect, an electronic retail store, and the web page is a shelf-talker or banner which encourages the consumer to buy the product and provides the information necessary to do so. A consumer using the link on the web page to purchase the goods is the equivalent of a consumer seeing a shelf-talker and taking the item to the cashier in a store to purchase it. See In re Dell Inc., 71 USPQ2d at 1727. The web page is, thus, a point-of-sale display by which an actual sale is made.

A point-of-sale display is “‘calculated to consummate a sale’”; that is, it includes the information necessary for the consumer to decide to purchase the goods, and it appears in a setting that allows the consumer to immediately buy the goods. In re Quantum Foods, Inc., 94 USPQ2d at 1379 (quoting In re Bright of Am., Inc., 205 USPQ 63, 71 (TTAB 1979)); In re Anpath Grp., 95 USPQ2d at 1382; In re MediaShare Corp., 43 USPQ2d at 1305; Lands’ End Inc., 797 F. Supp. at 514, 24 USPQ2d at 1316. An advertisement, however, merely describes or touts the benefits of the goods, influences people to buy them, or informs the public about the goods and the company that provides them. In re Anpath Grp., 95 USPQ2d at 1381-82; In re Quantum Foods, Inc., 94 USPQ2d at 1379. It does not offer a way to directly purchase the goods, because it either does not contain an offer to accept orders for the goods or does not provide special instructions for placing orders for the goods. In re Quantum Foods, Inc., 94 USPQ2d at 1380; In re Osterberg, 83 USPQ2d at 1224.

Therefore, a web page that merely provides information about the goods, but does not provide a means of ordering them, is viewed as promotional material, which is not acceptable to show trademark use on goods.  See In re Genitope Corp., 78 USPQ2d 1819, 1822 (TTAB 2006) (“[T]he company name, address and phone number that appears at the end of the web page indicates only location information about applicant; it does not constitute a means to order goods through the mail or by telephone, in the way that a catalog sales form provides a means for one to fill out a sales form or call in a purchase by phone.”).  Merely providing a link to the websites of online distributors is not sufficient.  There must be a means of ordering the goods directly from the applicant’s web page, such as a telephone number for placing orders or an online ordering process.  In re Quantum Foods, Inc., 94 USPQ2d at 1380; In re Osterberg, 83 USPQ2d at 1224.

When a web-page specimen appears to be merely advertising, statements by the applicant that the specimen is used in connection with the sale of the goods, without evidence or a detailed explanation of the manner of use, will not suffice to establish that the specimen is a display associated with the goods. In re Osterberg, 83 USPQ2d at 1224 (finding that applicant’s mere statement in a signed declaration that copies of the web page were distributed at sales presentation lacked sufficient detail to transform the web page from an advertisement into a display associated with the goods).

Whether a web-page display qualifies as an acceptable specimen is a question of fact, based on the evidence of record.In re Azteca Sys., Inc., 102 USPQ2d at 1957 (citing Lands’ End, 797 F. Supp. at 514, 24 USPQ2d at 1316); In re Hydron Techs. Inc., 51 USPQ2d 1531, 1533 (TTAB 1999). The presentation on the web page of the picture or description of the goods, the manner of the mark’s use in association with those goods, and the nature of the ordering information affect the specimen’s acceptability. Thus, a specimen that describes or displays a picture of the goods, shows the mark, and provides ordering information may nonetheless be unacceptable because it fails to demonstrate an association between the mark and the goods. Sometimes, a single fact or piece of evidence may be dispositive. Often, however, a combination of facts and evidence of record may be required to establish the acceptability of the specimen. If ordering information is not readily discernible from the submitted web page, the applicant may provide multiple, sequential web pages as part of the specimen to clarify the ordering process on the website.

For TEAS applications under §1(a) in which the specimen is an electronic file in .wav, .wmv, .wma, .mp3, .mpg, or .avi format, the electronic file can be attached to the application, but should not exceed 5 MB for audio files and 30 MB for video files because TEAS cannot accommodate larger files. To submit an electronic file in connection with any other TEAS form (e.g., Response to Office Action or Statement of Use/Amendment to Allege Use), the file must be sent after the TEAS document is transmitted, as an attachment to an e-mail message directed to TEAS@uspto.gov, with clear instructions that the electronic file should be associated with “the application filed under Serial No. <specify>.” Note, however, that audio and video files attached to an e-mail currently cannot exceed 9 MB.

A “scratch and sniff” sticker for a scent mark is an acceptable specimen, provided that it is part of the packaging for the goods or is used in such a manner as to identify the goods and indicate their source.