Can My Website Be A “Specimen” For Showing “Use In Commerce” Of My Trademark?

In order to perfect rights in a trademark application, the applicant must show that the trademark is being “Used in Commerce.”  Use in Commerce means that the mark must be used in the sale or transport of goods or the rendering of services in “interstate” commerce. For goods, the mark must appear on the goods (e.g., tags or labels), the container for the goods, or displays associated with the goods. For services, the mark must be used in the sale or advertising of the services.  Since the rise of e-commerce, many trademark applicants want to use their website as a specimen to prove Use in Commerce. While web pages can be perfectly acceptable specimens, that is only the case if certain conditions are met.

A website is an acceptable specimen for goods if the mark appears near a picture of the goods (or a text description of the goods) and customers can order the goods from the website. A website that merely advertises the goods is not acceptable.  This requirement can be satisfied by providing an ordering link such as “order now” or “add to cart”.

Using a website as a specimen for services can be trickier since services are not tangible products that can be sold and shipped with the click of a mouse. Trademark Rule 2.56(b)(2) provides that “[a] service mark specimen must show the mark as actually used in the sale or advertising of the services.”  When appropriate, the Board has been fairly flexible in accepting service mark specimens. Consult a knowledgeable trademark attorney to ensure compliance.

Whenever a website is used as a specimen, the applicant must provide an actual screenshot of the website. Merely providing the website address is not acceptable.

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