The USPTO requires applicants to submit a specimen of the mark as used with their statements of use, where the specimen “must show use of the mark on the goods, on containers or packaging for the goods, on labels or tags affixed to the goods, or on a display associated with the goods.” Trademark Rule 2.56(b)(1), 37 C.F.R. § 2.56(b)(1). “An important function of specimens in a trademark application is, manifestly, to enable the PTO to verify the statements made in the application regarding trademark use.” In re Bose Corp., 546 F.2d 893, 897 (CCPA 1976) (citation omitted); see also TMEP § 904.07(a) (July 2022) (explaining that a specimen must show use of the mark for the goods identified in the application).
In other words, goods in the specimen must match the goods identified in the trademark application.
“[A] mismatch between the identified good and the goods and/or services reflected by the specimens” is a potentially fatal problem. In re Thee Earth & Composting Solutions, LLC, Ser. No. 98020099 (TTAB Apr. 22, 2026).
Here, Thee Earth & Composting Solutions applied to register the mark THEE EARTH & COMPOSTING SOLUTIONS LLC & design for “compost” in Class 1. The specimen, however, showed a “toter bin” with the mark that Thee Earth's customers purchase “for purposes of storing their compostable organic waste prior to scheduled collection” after which compost is produced from the collected organic waste.
The issue was not whether Thee Earth sold compost. There was no dispute that it did. And the TTAB acknowledged Thee Earth's assertion that it sold compost in bags with [Thee Earth]'s mark on them.
But the problem is that none of the specimens Applicant submitted shows a labelled bag of compost as Applicant sells it. Rather, the specimens depict other things. The original specimen (and one of the substitute specimens) depicts a toter bin.***[T]he two specimens that show the mark show it only on a “toter bin,” and Applicant is clear that it does not sell compost in a toter bin, but in bags. In layperson's terms, there is a “disconnect” or “mismatch” between the single good listed in the application (compost) and the goods and services Applicant says that specimens represent.
The TTAB thus affirmed the refusal of the registration for lack of a proper specimen.
Unfortunately, at this late stage, nothing can be done to “fix” this issue. Trademark Rule 2.142(g), 37 C.F.R. § 2.142(g), provides: “An application which has been considered and decided on appeal will not be reopened except for the entry of a disclaimer under section 6 … .” (There is no disclaimer issue in this case.) Applicant, of course, remains free to file another application and provide a proper specimen or specimens showing use of the mark on the good(s) and/or service(s) identified in the application.
Had the applicant filed a motion to remand during the appeal to submit a new specimen, the problem could have been fixed; but that option was no longer available after the TTAB issued its decision.
The appeal here was handled pro se. Posted on the TTABlog was the comment: “Hire a lawyer.”
Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.
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