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What should I do if my trademark application receives a specimen refusal in an office action?

Senior Trademark Attorney

The office action will specify the grounds for the refusal. The standard options are submitting a substitute specimen, switching the filing basis, or responding with arguments if the refusal is incorrect.

Submitting a substitute specimen is the most common resolution: provide a new, real photograph or screenshot that clearly shows the mark in active use in US commerce in connection with the goods or services. The substitute must be accompanied by a declaration that the specimen was in use on or before the relevant date.

If the mark is not yet in US commercial use, the application can be amended from a use-in-commerce basis to an intent-to-use basis, with the specimen submitted later through a Statement of Use.

If the original specimen was valid and the refusal is incorrect, argue against the examiner's reasoning directly with an explanation of why the specimen meets the requirements.

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