How to prepare your specimen for filing

During my Big Law days, I was doing mostly patent work, with a few trademark matters thrown into the mix. I remember spending days researching the DuPont factors, analyzing proposed mark against existing registrations, and drafting clearance opinions. All felt very academic and intellectual. I even worked on a trademark litigation where my client's supplier and distributor made a side deal, and tried to hijack the client's mark and goodwill.

That was high-stakes drama. It was sexy. It was also completely useless for learning how to actually file a trademark application. Well, maybe the DuPont knowledge helped, but the litigation tactics of filing emergency motions at midnight. Not so much.

So, it wasn't until my friend and I hung our own shingle that I leaned into the prosecution side of trademark law. Any veteran practitioner will tell you that trademark prosecution isn't difficult, per se. It isn't rocket science. But it is incredibly, frustratingly nuanced. The devil doesn't just live in the details here; he has a permanent lease and a corner office.

To help you evict that devil, or at least manage his paperwork, I want to share a few practical, real-world strategy tips, specifically on specimens, that I wish I had known from day one. It would have saved me hours of agonizing, screen-glaring, and mini-panic attacks before my shingle became weathered.

Why do we need specimens anyway?

According to the TMEP:

Specimens are required because they show the manner in which the mark is seen by the public. Specimens also provide supporting evidence of facts recited in the application.

A specimen is required as evidence of the mark being used in commerce. Unless you have a foreign registration to base your application on, you will, sooner or later, need to provide the USPTO with an acceptable specimen.

The TMEP also outlines a comprehensive process for evaluating specimens to ensure they meet statutory and regulatory requirements. This evaluation typically occurs during the initial examination of a use-based application, or upon the filing of a statement of use for intent-to-use applications.

When evaluating a specimen, an examining attorney's first step is to determine whether it satisfies three basic "use-in-commerce" requirements:

• Appearance of the Mark: The applied-for mark must actually appear on the specimen. Does the mark actually show up on the specimen exactly as it is typed in the application?
• Connection to Goods/Services: The specimen must show use of the mark in connection with the specific goods or services identified in the application. Does the specimen clearly tie the mark to the specific goods or services listed?
• Actual Use in Commerce: The specimen must demonstrate the mark is in actual "use in commerce" rather than being a mere mockup or preparation for future use. Where do I buy this?

I won't go into the various troubles your specimen can get into today. So assuming that your client's mark appears on the specimen and their goods/services are legitimately in commerce, what else can you do to make sure that your specimen pass the muster of a scrutinizing examining attorney.

Answer: you make their life incredibly easy.

Preparing your specimen

Here is the secret weapon I wish I had discovered years earlier:

mark up your document.

Yes, it is that simple. Put giant, bright red arrows and boxes all over your specimen.

For the longest time, I never did this because no one explicitly told me I could. I was a rule follower. I assumed the USPTO wanted pristine, unblemished records, well, for the record. Maybe you are a rule follower, too. We are trained in law school to respect the document, to treat evidence like a sacred artifact.

Then, one afternoon, I was digging through past Office Action responses, trying to see how seasoned experts had handled an unrelated substantive issue. I came across a successful specimen submission they had attached.

It was a total light bulb moment. The more I looked, the more I noticed a pattern. Experienced attorneys weren't just dropping a ten-page PDF into the system and hoping for the best. They were using digital highlighters. They were drawing bright boxes around the trademark and pointing thick arrows at the "Add to Cart" button or at specific passages. They were screaming, Look right here!

I put this into practice immediately to overcome a partial specimen refusal. My client had submitted an eight-page terms of service document printed straight from their website. Buried deep on page six, in standard 11-point font, was the exact list of services the Examining Attorney claimed we hadn't proven.

Look, I know it is the Examining Attorney’s job to review the specimen. I know they are supposed to dot the i's and cross the t's. But they are also human beings staring at hundreds of applications a week. If you hand them an eight-page wall of text, they might miss the gold. By slapping a giant red box around page six, I got the refusal withdrawn.

As attorneys, we advance our clients' interests by making the regulator's job completely foolproof. Drop the arrows. Draw the boxes. Guide their eyes straight to the prize.

Break Free from the Single-Page Constraint

Here is another arbitrary rule I made up in my own head early on: I assumed a specimen had to fit on a single page.

Because of that assumption, I spent hours of non-billable time trying to position the content of a client’s website just right on my screen so that a single screenshot would capture both the logo at the top header and the commercial services listed at the bottom. I zoomed out. I resized my browser window. I shrunk the text until it was unreadable. I agonized; all because I was trying to force reality into a one-page box.

Hear me now: your specimen can be more than one page.

Go ahead, you have my permission, even though you don't need it.

If the logo is on the homepage, but the checkout button and service description are three scrolls down, take multiple screenshots. Or better yet, just print the entire page. Yes, the formatting will be off and the resulting page will look like you broke the website. But, your specimen doesn't get bonus points for being stylish. The USPTO does not penalize you for ugly formatting or extra context; they penalize you for ambiguity.

Embrace Your Inner Rebel: Submit Multiple Specimens

If you really want to feel like a renegade, go ahead and submit more than one specimen per class. Gasp!

The USPTO filing system explicitly allows you to upload multiple files for a reason. When you file clear evidence, you take away the Examining Attorney's reasons to doubt. You turn a potential back-and-forth negotiation into a swift, silent approval.

Stop treating the application process like an exam where you only give the minimum required answer. Be obvious. Be thorough.

But please, learn the law and read the TMEP. Do not file things "just in case." More isn't always better.