How can I overcome a specimen refusal?

Photo of Jan Buza

Written by Jan Buza

Co-founder of Trama

If you received a trademark specimen refusal, the office action will include your options to overcome it, but generally, you'll be able to do one of the following:

  • Provide a substitute specimen and a disclaimer stating that it was used in commerce before the deadline.
  • If you filed your application on a use-in-commerce basis, you can switch to Intent to Use. You will still have to provide specimens later, but it will buy you more time than the original three-month response window.
  • Submit a response with a counter-argument supporting your case. For example, if the examiner refuses your website specimen for not including means of ordering, you might be able to argue that in your niche, orders are usually placed by phone and that your specimen includes the phone number.
  • Abandon the classes where you received the refusal and progress with the others, if applicable.

As you can see, if you want to overcome the refusal, you will either have to provide a new specimen or successfully argue your case. The key to both is to look at the reasons for the original dismissal, which will be stated in the office action. If you are not sure how to interpret the office action or how to prepare new specimens/a response, we recommend seeking the help of a trademark attorney.

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