Why Foreign Applicants' Specimens Get Refused: Proving Use in U.S. Commerce

October 7, 2026

Foreign brand owners often discover specimen problems at three points: a use-based application under Section 1(a), a statement of use after an intent-to-use filing, and the first post-registration declaration of use. Each of these requires a specimen showing the mark actually used in commerce with the listed goods or services. Here is where foreign filings commonly go wrong.

What a Specimen Must Show

For a use-based application, 37 CFR § 2.34(a)(1) requires a verified statement that the mark is in use in commerce, the dates of first use, and "one specimen showing how the applicant uses the mark in commerce." For goods, that usually means the mark on the product, its labels or packaging, or a point-of-sale display such as a webpage where the goods can be ordered. For services, it means the mark used in selling, advertising, or rendering the services.

Issue 1: No U.S. Purchasing Path

A website that displays the product but offers no way for U.S. customers to buy it, or that sells only in a foreign currency to foreign addresses, may not show use of the mark in commerce that the U.S. Congress can regulate, which is the standard the USPTO's declarations refer to (see 37 CFR § 2.33(e)). Examining attorneys look for the mark near the goods, a price or ordering mechanism, and context showing sales to the United States.

Issue 2: Mockups and Digitally Altered Images

Product renderings, files created for the application, and photos where the mark has been digitally added are routinely refused. A specimen should be a real photo or capture of the mark as customers actually see it. See also our general guide to specimen pitfalls.

Issue 3: The Mark Doesn't Match the Drawing

A foreign owner's packaging may show the mark in a different stylization, alongside other-language wording, or in a combined logo. If the specimen doesn't show the mark as applied for, expect a refusal or a requirement to explain.

Issue 4: Section 44 and Madrid Owners Who Never Started Using the Mark

Section 44 and 66(a) registrations can issue without U.S. use, but the registration must later be maintained. The Section 8 declaration (37 CFR § 2.161(a)(7)), and its Madrid counterpart under Section 71 (37 CFR § 7.37), require a specimen for each class unless excusable nonuse is claimed. Under § 2.161(b), the USPTO may require more information, exhibits, and specimens "to assess and promote the accuracy and integrity of the register." Owners should be building U.S. use well before the fifth anniversary. See our maintenance guide.

Issue 5: Use Claimed for Goods Not Actually Sold

A verified statement of use covers the listed goods and services. Listing products that are planned but not yet sold in the U.S. is a serious problem. Narrow the list, or keep those items on an intent-to-use basis where available.

How U.S. Counsel Helps

U.S. counsel shouldn't simply forward whatever image a client or foreign associate supplies. Reviewing specimens against the facts of U.S. sales protects the owner and the registration. For foreign firms instructing on a client's behalf, see our page for foreign law firms and associate counsel.

This article is general information, not legal advice, and reading it does not create an attorney-client relationship. Every situation depends on its own facts, and no particular outcome can be guaranteed. Laws and government fees change; confirm current requirements before acting.