A specimen of use can make or break a trademark application. Pitney Bowes wanted to register its new logo design as a trademark for mailing services among other things. For its specimen of use, Pitney Bowes used a screen shot from its website showing a picture of its “Mail&Go” kiosk that featured the new logo. The examining attorney refused the specimen saying that it showed the sale of products but not mailing services. Pitney Bowes appealed to the Trademark Trial and Appeal Board who reversed the refusal. The Board held that the examining attorney should have given greater deference to Pitney Bowes’ common sense explanation that its mailing services were offered to consumers through the self-service kiosk. Ultimately, Pitney Bowes submitted a substitute specimen of use anyway and the trademark has been registered.
WHY YOU SHOULD KNOW THIS. A specimen is a real-world example of how you are using your trademark on goods or in the offer of services. The Examining Attorney is going to match the specimen to the description of goods and services. This case shows how technical Examining Attorneys can be in that analysis. If you file a use based application, it might be helpful to create the description of goods and services from the specimen you are going to submit. If you are filing an Intent to Use application, then the specimen should be created from the description in the application. But what happens if you file an Intent to Use application and when it comes time to file the specimen of use, the goods or services have changed from the original description? If the change is material, you might have to file a new application.