What are my chances of overcoming a specimen refusal?

Photo of Jan Buza

Written by Jan Buza

Co-founder of Trama

If you receive a trademark specimen refusal from the USPTO, to overcome it, you'll generally have two options: provide a substitute specimen (either right away or after postponing the submission) or submit a counter-argument supporting your original specimen. The former is more common.

With a substitute specimen, your chances of success will depend on the reason for dismissal and your ability to produce a new specimen. You can find the examiner's reasoning in the office action. Sometimes, it might be enough to submit a photo from a different angle. Or one screenshot might not fulfil all the requirements, so you'll have to submit more screenshots. Othertimes, however, the problem with the specimen can be related to your use of your mark, and you'll have to abandon your application.

If you are not sure how to interpret the specimen refusal, a trademark attorney will be able to explain the office action and your chances to you.

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