To apply for a federally-registered trademark with the United States Patent and Trademark Office (USPTO), an applicant is required under 15 U.S.C. § 1051 to, among other things, submit specimens of the mark and verify that it is being used in commerce (or in the event of a future intent to use, verification as such and future submission of specimens).

Last month, the USPTO revised its Examination Guide 3-19, titled “Examination of Specimens for Use in Commerce: Digitally Created/Altered or Mockup Specimens.”  The guidance speaks to whether digitally created/altered and mockup specimens submitted to the USPTO can constitute examples of use in commerce either of a mark on goods or of a mark associated with services. The USPTO concludes that such specimens do not evidence actual use in commerce.  Accordingly, the USPTO instructs examining attorneys to issue a refusal of registration and request additional information from the applicant (while also empowering examining attorneys to conduct independent research).  In response, the applicant may defend the original specimen or may choose to amend its filing or submit a verified substitute specimen.

The USPTO’s Examination Guide defines digitally created/altered and mockup specimens as follows:

• A digitally created specimen comprises a digital drawing of the goods or packaging on which the mark appears.
• A digitally altered specimen includes a digital alteration of an existing image of goods or packaging for goods, a display associated with goods, or an advertisement or website that purports to show the mark used on the goods or in the sale, performance, or rendering of services.
• A mockup specimen comprises a digital or non-digital rendering of what a mark would look like on a product, display, or website; these may be created solely for submission with the application.

Therefore, as a reminder, when compiling evidence of use to submit with a trademark registration, always make sure to utilize actual evidence of use, and not any digitally created, digitally altered, or mockup specimens.

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