How to respond to an unregistrable service specimen refusal

Receiving a failure-to-function refusal after filing a Statement of Use can feel like a punch in the gut. It’s especially frustrating when you’ve won hard-fought battles (both with the USPTO and your own client) just to get tripped up at the five-yard line. The end was in sight.

So you thought.

Now? You are staring at an Office Action that feels like it is silently mocking you. It reads:

"...registration is refused because the activities recited in the identification of services, when viewed in conjunction with the specimen, are not registrable services as contemplated."

Wait, WHAT? What do you mean NOT REGISTRABLE? My client literally does this every day!

Deep breath. Put down the coffee.

Before we can tackle this and get it across the finish line, we have to look past the bureaucratic jargon and figure out exactly what rule the examiner thinks we broke. To determine whether an activity actually constitutes a registrable service under the Trademark Act, the USPTO applies a three-prong test evolved from case law—specifically detailed in Trademark Manual of Examining Procedure (TMEP) § 1301.01(a).

According to the TMEP, in order to be a registrable service, your client's activity must meet three strict criteria:

1. a service must be a real activity;
2. a service must be performed to the order of, or for the benefit of, someone other than the applicant; and
3. the activity performed must be qualitatively different from anything necessarily done in connection with the sale of the applicant’s goods or the performance of another service.

Let's break this down.

The Three-Prong Gauntlet

Prong 1: It Must Be a Real Activity

The first requirement is pretty straightforward: it has to be a real, tangible activity performed in the physical or digital world. "Real" means it has moved beyond the daydream phase into material execution. A mere idea, a business concept, or a philosophy is not a service. If you cannot point to the actual execution of the task, you stumble at the first hurdle.

Prong 2: The "Benefit of Others" Mandate

Starting and growing a business is brutal. You perform a million different activities just to keep the lights on. However, while an applicant may derive an incidental benefit from their daily operations, the primary beneficiary of the specific service claimed must be a third party.

If your client is doing something that ultimately just helps them sell more of their own stuff, you are going to have an issue. This is by no means a problem only for small players; big fish like Dr. Pepper ran into issues when attempting to register their cash-award contests.

Prong 3: The Ancillary Trap

This prong is deeply intertwined with Prong 2. It requires that the activity be qualitatively different from the primary activity or product.

When I deal with overzealous clients who want to protect their brand as broadly as possible, they often hand me an exhaustive list of every single thing their company does. I have to push back. I ask them: Which of these activities are you doing to build your business, and which of these activities ARE your actual business?

One common activity that routinely falls into this trap is marketing or advertising.

For example, in Serial No. 98073606, the Applicant initially sought to register in Class 12 for "Tires; Automobile tires; Inner tubes for vehicle tires," and Class 35 for "Advertising and marketing of tires... point of sales advertising for tires..."

The Examining Attorney issued a partial refusal for class 35 only, stating that:

"Providing advertising or promotional goods and/or services to retail or wholesale businesses that sell applicant’s products is not a sufficiently separate activity from the sale of applicant’s goods to constitute a registrable service as contemplated by the Trademark Act... Here, the specimen indicates that these activities are not registrable services because applicant's specimen shows applicant's advertising services are for applicant's own goods."

Application serial no. 98104459 faced a similar fate for its promotional activities and incentive reward programs:

"The specimen indicates that these activities are not registrable services because the presumed incentive reward program, being the membership offer that includes a $20 voucher to buy products in applicant's own online shop featuring applicant's products, constitutes promotional activities that are for applicant's own benefit. This type of promotional arrangement is not considered a service under the Trademark Act because it merely induces consumers to buy applicant's goods from applicant's retail store, which is not a sufficiently separate activity from applicant's retail store services or the sale of applicant's goods."

Your options moving forward

Here are some options to see you to the finish line.

1. Delete the description/class

The quickest path is to choose peace and just let it go. Whether the Examining Attorney picks bones with a single part of your recitation or the entire class, you can simply respond by deleting the offending service.

You also have the option to intentionally not respond to that specific issue and let the refused parts be abandoned. When the statutory deadline passes, the Examining Attorney will initiate an Examiner's amendment to delete the abandoned portions and let the rest of the application move to registration.

2. Submit a substitute specimen

Another relatively quick fix is to submit a substitute specimen for consideration—provided your client actually has something else to offer for inspection.

While this is a great option on paper, in reality, clients often struggle to produce the appropriate evidence.

[Dear Client: No, please do not quickly update the website right now so we can take a screenshot. Oh, please DO NOT just make something up now.]

My concern with this approach is that clients naturally want to please you. They want to get you what you need without realizing the legal consequences of "generating" specimen. Even when you think you are being crystal clear in your counseling, clients often hear what they want to hear.

3. Resubmit the same specimen

Did the Examining Attorney just miss or misinterpret your specimen? This is entirely possible, especially if you didn't mark up your first submission. If your specimen is a long, multi-page document, it’s easy for an examiner to overlook the key details.

If that's the case, simply respond to the Office Action and point out the obvious. This might be as simple as adding callouts to your specimen to silently point out what was already there.

For example, in application serial no. 98031311, the Office Action claimed the specimen only showed the applicant manufacturing their own goods, rather than distributing the goods of others. The applicant’s response was a polite but firm redirection:

"Applicant respectfully redirects the Examining Attorney to the globmed.biz website already-submitted... illustrating distribution and warehousing services for third-party products in connection with the mark…"

The applicant included a clear screenshot of the relevant section of the specimen, in the remarks, explicitly pointing to the location of the mark.

4. Prove the Services Go "Above & Beyond" (The Mitsubishi Strategy)

This option is for those whose services are deemed ancillary to their main product. You can fight back by arguing that the services are qualitatively different from the primary activity, showing that they go far above and beyond industry norms.

Mitsubishi Motor Sales of America, Inc. filed to register its mark for a comprehensive vehicle preparation and customer follow-up program. The Examining Attorney refused registration, arguing that these activities weren't qualitatively different from what any standard car dealership does in the normal course of business (dealer prep, tech walkthroughs, warranty adjustments). The examiner even submitted database excerpts to prove that Honda and Toyota dealers do the exact same thing.

Mitsubishi didn’t dispute that all dealers provide these baseline services. Instead, they emphasized that their specific program offered extra services that went way past standard industry expectations.

Ultimately, the TTAB sided with Mitsubishi and reversed the refusal. The Board found that the program went so far above the baseline expectations of a car sale that it constituted a distinct, registrable service.

So, ask yourself: Are the services you are fighting for breaking the mold of standard customer expectations?

5. Change filing basis

I must admit, I’ve never actually deployed this one myself. I know it’s theoretically possible; I just haven’t handled a case that required pulling this specific lever.

Here is ane application that pulled it off.

Application serial no. 97754332 for the mark PDD HOLDING was initially filed under a Section 1(b) Intent-to-Use basis. It progressed smoothly through prosecution, was published for opposition, and received a Notice of Allowance. But when the Statement of Use was filed, a non-final refusal dropped:

"...The specimen which appears to be an investor relations page for the applicant, indicates that the services being provided are not registrable services because they do not appear to be performed for the benefit of someone other than the applicant..."

The applicant filed a response, but it failed to cure the defect, and the refusal was made final.

So, the applicant pulled out a total hat trick. Armed with a foreign registration, they petitioned the Director to substitute the filing basis from Section 1(b) to Section 44(e).

Voilà! The requirement to show use in U.S. commerce completely disappears.

Neat, right? Let me try!

Not so fast, Maverick.

To deploy this tactic, the applicant must be the owner of a valid registration in their country of origin (15 U.S.C. §1126(c), (e)). As TMEP § 1002.01 clarifies, a U.S.-domiciled applicant cannot use Section 44(e) unless they own a registration from an eligible foreign country and can establish that country is their actual country of origin.

So, you may or may not actually be holding that foreign registration ace up your sleeve.

Even if you are able to use this trump card to bypass the specimen hurdle, keep two major caveats in mind:

• You still have to use it eventually: While Section 44(e) lets you register without showing use in commerce, you still need to show U.S. use to maintain the registration later.
• You are still vulnerable: Regardless of the filing basis, a registered mark is still subject to cancellation or expungement proceedings. Non-use makes a registration highly vulnerable, even if you successfully get it onto the register.