Using your trademark correctly as filed – how to avoid refusal from the USPTO

Mark Differs on Drawing and Specimen”

It is important to note that the trademark must be used exactly as filed. It means that the trademark (called “drawing” by the USPTO) must be substantially the exact representation of the mark as intended to be used on products and services, as shown by the specimen (trademark in use is shown via specimen – a photograph of your products showing your brand).

Extraneous matter shown on the specimen that is not part of the mark (the symbol “TM,” ” the registration notice ®, the copyright notice ©, or informational matter such as net weight or contents) cannot show on a trademark drawing.

If you file for a standard character mark (word mark), it’s essential that there are no symbols or images that separate/break the wording or are integrated into the formulation.

Some examples:

  • Trademark filed: ALL STOP
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Trademark used on products (specimen provided):ALL STOP

Conclusion: use of this logo will not be considered as use of the word mark ALL STOP as there is a design of a shield with caduceus inside and this design visually breaks or separates the wording “ALL STOP.” So if a trademark is filed for ALL STOP, but the logo above is used, the Trademarks Office will ask for different photographs. The takeaway: if you use a stylized version with an image or symbol inside your wording, it’s best to file for the logo, not wordmark.

  • Trademark Filed: FRESH HEALTHCARE

Trademark used:FRESH HEALTHCARE

Conclusion: The image is shown on the left and doesn’t interfere with the wording, so if the wordmark.

 

FRESH HEALTHCARE is filed, but the logo is used, then the use of the logoFRESH HEALTHCAREwill still support the use of the word mark.

It will be best to protect both the standard characters mark (FRESH HEALTHCARE and the logoFRESH HEALTHCAREorFRESH HEALTHCARE logo) and this is what our client did in this case.

  • Trademark filed: THE PACK.

Trademark used:THE PACK

Conclusion: The sword visually breaks the wording, so the use of the logo will not support the use of the word mark. Trademarks Office will ask to see the use of the mark THE PACK without any elements inside the wording.  Correct trademark to file was THE PACK.

  • Trademark filed: THREE ARROWS.

Trademark used: THREE ARROWS

Conclusion: The words THREE ARROWS cannot be separated or broken with another symbol or image, and in this case, three arrows appear between the words “THREE” and “ARROWS.” Trademarks Office will ask for substitute specimens in this case. Correct trademark to file was THREE ARROWS.

  • Trademark filed: ACTIVIVA

Trademark used: ACTIVIVA

Conclusion: The dot above the letter “i” is shown as a leaf and the three stylized drops to the left from the word “ACTIVIVA” are shown too close. So, the correct mark to file is the logo