Specimen guide for Class 42

What is a trademark specimen?

When you apply for/renew a US trademark, you must prove to the USPTO that your trademark is "used in commerce", i.e., that your goods/services are available for purchase or ordering to US customers. In practice, you will prove the use in commerce by submitting a so-called specimen, which is usually a photograph or a screenshot of your trademark used together with the goods or services you applied for (e.g., depicted on the product packaging, on your storefront, etc.).

What is considered a sufficient specimen will depend on multiple factors, including whether you offer goods (Classes 1-34) or services (Classes 35-45).

In this guide, we will look specifically at trademark specimens for Class 42 - the best format, requirements, and examples from the USPTO.

What is a proper specimen for Class 42?

Class 42 includes services related to research, science, technology, architecture and IT. Additional services encompassed in Class 42 include cloud computing, software as a service, web hosting services, design services and engineering services.

For service classes in general, the specimen should show the use of the mark in the sale or advertising of the service. Therefore, for Class 42, we would recommend the following options as specimens:

• Website screenshots
• Advertising materials, such as brochures, flyers, magazine ads or newspaper clippings

Other acceptable formats include copies of invoices, business cards, etc., but in our experience, these often don't fulfil all the requirements, so we would only recommend them to a more experienced filler. We usually ask our clients to provide either a screenshot or marketing material. If they can't, then we move on to the other options.

What requirements does my specimen for Class 42 have to meet?

Besides the format mentioned above, your specimen must meet a few general requirements to be accepted. For a service class such as Class 42, these requirements include the following:

Legibility

The mark must be clearly visible, meaning it must be legible, not cropped off, etc.

Correct mark version

The mark shown on the specimen has to match the mark in the original trademark application exactly. For example, if you applied for a mark consisting of a graphical element and the brand name, the specimen can't display just the graphical element.

Realness

The specimen must be a real photograph/screenshot, not a digitally altered or created image.

Showing connection

The specimen has to show a clear connection between the mark and the applied-for service. This means the specimen must explicitly reference the services and then show the mark directly associated with them. For example, a business card wouldn't make a good specimen if it doesn't explicitly include a service description matching the items listed in the trademark application.

This is why website screenshots and advertising materials are better choices for novice applicants, as they will likely already include a sufficient service description.

Generally, to meet this criterion, a good rule of thumb is to ask: "Is it clear from the specimen that the trademark belongs to the services I said I was offering in my trademark application?"

Additional requirements for software as a service

Besides including a service description and showing the mark associated with the service, the specimen must also:

• Include a "Login" button. "Contact us", or a similar type of button is not sufficient. "Download", "Install", or "Get" buttons also wouldn't be accepted since downloadable software would be a good, not a service, and therefore would fall under Class 9.
• Identify the software and not its providers.

This means that a homepage or about us page would probably be your safest bet. Pricing pages can sometimes work too if the packages sufficiently describe the functionality and the screenshot also includes the mark and a correct CTA. As an added benefit, subscription options further prove the mark labels a service and not a product. If you can't fit all of the required information into one screenshot, you can submit more than one specimen file.

On the other hand, while screenshots of app stores and online marketplaces make for goods Class 9 specimens, they are not suitable for Class 42. Remember that if the software is downloadable or recorded on physical media, it belongs under Class 9.