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Is a trademark specimen refusal hard to overcome?

Senior Trademark Attorney

For most applicants, overcoming specimen refusals isn’t hard. It’s typically done by submitting a substitute specimen that corrects the specific deficiency identified in the office action.

If the issue is illegibility, you should submit a clearer image. If it’s a digital alteration issue, you should submit a real, unaltered photograph. A mismatch refusal requires a specimen where the mark appears as originally filed.

The more challenging scenarios are: where the mark is not actually in US commercial use and a substitute cannot be produced, or where the specimen received an ornamental refusal (meaning the mark is presented as a design element rather than a brand identifier). Ornamental refusals require either repositioning the mark in commerce or arguing against the finding.

Related questions

Can you change your trademark over time?

Brands tend to evolve and undergo numerous changes over time. Many companies have changed their names to cater to a larger audience, either by altering their original logos for a more modern look or abandoning controversial words in their slogans. As the company expands beyond its planned offerings of goods and services or decides to take a different direction altogether, usually what follows are certain changes or even complete rebranding. A common question is then: can trademarks change over time? Well, it depends.

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