Trademark Function Toolkit: Specimen Audits, Secondary Source Evidence, and Office Action Response Outlines

Summary. This toolkit collects the working papers for responding to USPTO failure-to-function and ornamental refusals, each introduced by its purpose, its owner, and when to use it, and each followed by drafting commentary tied to the governing statute, rules, and cases. The intake templates are a refusal triage memo, a specimen audit worksheet, a client fact and document request, and a chart for classifying the examining attorney's third-party evidence. The evidence templates are a substitute specimen and basis amendment package, a secondary-source declaration, and a bank of alternative-claim language for Section 2(f) and the Supplemental Register. Four office action response outlines address ornamental, informational, widely used message, and hashtag refusals, and a further template covers the request for reconsideration and notice of appeal. A client-facing merchandise labeling guide, a letter-of-protest and opposition evidence outline for third parties, and a deadline tracker complete the set, all illustrated by one running example.

A failure-to-function response is won or lost on paper the client already has: a hang tag in a drawer, a supplier invoice, a sign over the shop door, a spreadsheet of where the slogan first appeared. The templates below are designed to find that paper quickly, put it in a form the examining attorney can accept, and say clearly what it proves. They assume the doctrine in Failure to Function and Ornamental Refusals: Why Slogans, Hashtags, and Merchandise Designs Get Rejected and follow the sequence in Overcoming a Failure-to-Function or Ornamental Refusal: A Practical Guide. The task-by-task version is the Failure-to-Function Refusal Response Checklist: A Practical Checklist.

How to use this toolkit

Each template states its purpose, its owner, and when to use it, then gives the template and a short drafting commentary. Bracketed text in capitals is to be filled in. Use one numbering system across all papers: E- for exhibits, TP- for items of third-party evidence, and S- for specimens, so that a declaration, a chart, and the response can all point to "TP-14" or "S-2" and mean the same thing.

The running example. Coyote Bloom Apparel, LLC, of Tucson, Arizona, is owned by Mateo Ruiz, who also runs Coyote Bloom Desert Nursery, a plant nursery and landscape-design business operating under the COYOTE BLOOM name and a coyote-and-flower logo since 2014. Coyote Bloom Apparel sells shirts, hats, and tote bags. It filed three applications under Section 1(a) of the Lanham Act, 15 U.S.C. § 1051: (1) the coyote-and-flower logo for shirts and hats, specimen a shirt with the logo ten inches wide across the back; (2) BLOOM ANYWAY for shirts and tote bags, specimen a shirt front; and (3) #BLOOMANYWAY for "online retail store services featuring apparel," specimen an Instagram post. All three were refused for failure to function: the logo as merely ornamental, BLOOM ANYWAY as a widely used message, and the hashtag under TMEP § 1202.18.

Template 1: Refusal triage memo

Purpose: decide in one page what the refusal is, what cures are available, what the client wants, and what the fallback is. Owner: the responsible attorney, shared with the client. When to use: within five business days of the office action.

Drafting commentary. The memo forces the first and most important decision: whether the refusal turns on the specimen or on the matter itself. Here there is no third-party evidence and the examining attorney's only point is size and placement, so the case is a specimen case. The statutory basis for the refusal is the definition of a trademark in 15 U.S.C. § 1127, applied through Sections 1 and 2; the Federal Circuit has confirmed that this source-identifier requirement is "broader than just whether a proposed mark is generic or descriptive," In re Vox Populi Registry Ltd., 25 F.4th 1348 (Fed. Cir. 2022). Record the fallback now; it disciplines spending later.

Template 2: Specimen audit worksheet

Purpose: compare the specimen to the drawing and the goods, and inventory every other way the mark is used. Owner: a paralegal, reviewed by the attorney. When to use: in the first week, before any argument is drafted.

Drafting commentary. The audit is organized around the questions examining attorneys ask under TMEP § 1202.03(a): size, location, dominance, and significance of the matter as applied to the goods. The worksheet also tests each candidate substitute against 37 C.F.R. § 2.59 (in use in commerce as of the filing date for a § 1(a) application) and § 2.56 (what a specimen must show), both in 37 C.F.R. Part 2. For website specimens (S-5), apply the Federal Circuit's point-of-sale tests in In re Sones, 590 F.3d 1282 (Fed. Cir. 2009), and In re Siny Corp., 920 F.3d 1331 (Fed. Cir. 2019). The "proof of date" column is not optional. A substitute filed without proof that it was in use before the filing date invites a challenge later, and a false verified statement can void the registration. The general specimen rules are summarized in the Trademark Specimen Preparation Checklist: A Practical Checklist.

Template 3: Client fact and document request

Purpose: obtain the facts and records needed for every likely argument in one request. Owner: the attorney; sent to the client. When to use: the same week as the triage memo.

Subject: [MARK] trademark application: documents needed by [DATE]

Dear [CLIENT NAME],

The USPTO has refused to register [MARK] for [GOODS/SERVICES] because, in the
examining attorney's view, [PLAIN-LANGUAGE SUMMARY OF REFUSAL]. Our response is
due [DEADLINE]. To decide how to respond, we need the following by [INTERNAL
DATE]. If something does not exist, tell us; please do not create anything new
for this purpose.

1. Every way [MARK] appears on or with your products: hang tags, neck labels,
   woven labels, care labels, packaging, stickers, displays, and website pages.
   For each, a photograph and the date you first sold goods carrying it.
2. Invoices or emails from suppliers showing when tags and labels were ordered
   and delivered.
3. The date you first used [MARK] and the date you first sold goods with it
   outside [STATE].
4. Annual sales of goods bearing [MARK] for each year since [YEAR].
5. Advertising and promotion featuring [MARK]: samples and annual spend.
6. Press articles, blog posts, or social media posts by others that mention
   [MARK] and connect it with your business.
7. Any other business or service you operate under [MARK] or the same logo,
   with dates, signage photographs, and website pages.
8. Copies of any trademark registrations you own.
9. Examples you know of others using [MARK] or similar wording, and any letters
   or takedown requests you have sent about them, with results.
10. How customers refer to the product (for example, "the coyote shirt"), with
    any written examples.

Please call me with any questions.

[ATTORNEY NAME]

Drafting commentary. The request asks for facts, not conclusions, and it warns the client not to create anything. Items 1 and 2 feed Template 5; item 7 feeds Template 6 (secondary source); items 4 to 6 feed a Section 2(f) claim under 15 U.S.C. § 1052(f) and 37 C.F.R. § 2.41; item 9 feeds Template 4. The fuller evidence request for acquired distinctiveness cases is in the Distinctiveness Toolkit: Secondary Meaning Declarations, Genericness Surveys, and Brand Usage Guidelines. Mark the request and responses as privileged communications.

Template 4: Third-party evidence classification chart

Purpose: classify each item the examining attorney attached (and each item found in your own search) so the response can explain its weight. Owner: an associate or paralegal. When to use: in every informational, widely used message, or hashtag case.

Summary row: [NUMBER] copies; [NUMBER] unrelated contexts; [NUMBER] independent uses on the same goods before the applicant; [NUMBER] attributing the phrase to the applicant.

Drafting commentary. The categories track what the Federal Circuit weighed in In re GO & Associates, LLC, 90 F.4th 1354 (Fed. Cir. 2024), where the Board "properly considered both [the applicant's] uses and third-party uses," and the applicant did not argue that any of the dozens of third-party uses were attributable to it. In In re Brunetti, No. 2023-1539 (Fed. Cir. Aug. 26, 2025), the court approved the Board's reliance on prior third-party use on the same kinds of goods but held that such reliance "does not create a coherent standard" without an explanation of why some commonplace words can serve as marks and others cannot. The summary row tells the attorney and the client, honestly, whether the case is winnable. If the count of independent pre-existing uses on the same goods is high, as it was for the I ♥ DC mark in D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710 (TTAB 2016), the response should be short and the fallback should be discussed.

Template 5: Substitute specimen and basis amendment package

Purpose: replace an ornamental specimen with one showing the mark used as a brand, or preserve the filing date by amending to Section 1(b) when the better specimen is new. Owner: the attorney; the client signs the verification. When to use: with the first response, whenever a better specimen exists or is about to.

Part A: Substitute specimen statement (for a § 1(a) application)

SUBSTITUTE SPECIMEN: Class [25]

Applicant submits the attached substitute specimen(s) for the goods in Class
[25]: [S-2: photograph of a shirt showing the applied-for mark printed inside
the neck] and [S-3: photograph of a hat showing the applied-for mark on a woven
side tag].

The substitute specimens show the mark as used on the goods as labels/tags, a
conventional manner of trademark use for clothing.

Verified statement: The substitute (or new, or originally submitted, if
appropriate) specimen(s) was/were in use in commerce at least as early as the
application filing date. [Signatory is warned per 18 U.S.C. § 1001.]

[SIGNATURE] [NAME] [TITLE] [DATE]

Part B: Amendment to Section 1(b) (when the better specimen post-dates filing)

AMENDMENT OF FILING BASIS: Class [25]

Applicant amends the basis for Class [25] from Section 1(a) to Section 1(b),
15 U.S.C. § 1051(b). Applicant has had a bona fide intention to use the mark in
commerce on or in connection with the identified goods since the application
filing date, and continues to have that intention.

[VERIFICATION LANGUAGE] [SIGNATURE] [NAME] [TITLE] [DATE]

Part C: Division or deletion

Applicant deletes "[GOODS WITHOUT A SUPPORTING SPECIMEN]" from Class [25].
[OR] Applicant requests division of the application to place
"[GOODS]" in a new child application, and pays the division fee.

Drafting commentary. The verified statement must be true when signed; 37 C.F.R. § 2.59 requires it for substitute specimens and 37 C.F.R. § 2.20 governs the form of declarations. Use the exact verification wording the USPTO's electronic form provides. Amendment to Section 1(b) under 37 C.F.R. § 2.35 preserves the filing date; the applicant must then file an amendment to allege use or a statement of use with an acceptable specimen, a process covered in Intent-to-Use Trademark Applications: A Practical Guide and the Trademark Statement of Use Checklist: A Practical Checklist. Do not combine a new specimen with a change to the drawing. Adding a house mark or other matter to the drawing is barred as a material alteration under 37 C.F.R. § 2.72, as the Board held in In re Lee Greenwood, 2020 USPQ2d 11439 (TTAB 2020). In the running example, S-2 and S-3 were in use before filing and go in under Part A; S-4 (the hang tag) is held for the BLOOM ANYWAY strategy discussed in Template 10.

Template 6: Secondary-source declaration

Purpose: prove that the applied-for design or wording identifies the applicant as a source of other goods or services, so that its appearance on merchandise signals origin or sponsorship. Owner: the attorney drafts; an officer with personal knowledge signs. When to use: in ornamental cases where the applicant (or a related company it controls) has an established primary business under the same matter.

DECLARATION OF [NAME] IN SUPPORT OF APPLICATION SERIAL NO. [NUMBER]

I, [NAME], declare:

1. I am the [TITLE] of [APPLICANT] ("Applicant"). I have personal knowledge of
   the facts below, from my role and from Applicant's business records, which
   are kept in the ordinary course of business.

2. Applicant's primary business. Since [YEAR], Applicant [or its related
   company, [NAME], whose use of the mark Applicant controls] has operated
   [DESCRIPTION OF BUSINESS: e.g., a retail plant nursery and landscape-design
   service] under the [MARK] design (the "Design") shown in Exhibit [E-20].

3. Registrations. Applicant owns U.S. Registration No. [NUMBER] for the Design
   for [SERVICES/GOODS], issued [DATE] (Exhibit [E-21]). [If none: Applicant
   has used the Design as a service mark continuously since [DATE].]

4. Manner of use. Applicant displays the Design as its mark on [LIST: storefront
   signage, delivery vehicles, website header, plant labels, invoices, staff
   uniforms, advertising] (Exhibits [E-22 to E-28]).

5. Scale. From [YEAR] to [YEAR], Applicant served approximately [NUMBER]
   customers under the Design and had revenues of approximately [AMOUNT] from
   [SERVICES]. Applicant spent approximately [AMOUNT] on advertising featuring
   the Design. [Annual figures at Exhibit E-29, filed under seal if
   confidential.]

6. Recognition. The Design has been featured in [MEDIA: newspaper articles,
   television segments, trade awards] that identify it with Applicant
   (Exhibits [E-30 to E-33]).

7. Merchandise. Since [DATE], Applicant has sold shirts and hats bearing the
   Design through its nursery and website. Customers purchase these goods as
   [MARK] merchandise; examples of customer communications referring to them
   as [MARK] shirts are at Exhibit [E-34].

8. Control. All goods bearing the Design are produced to Applicant's
   specifications and sold by Applicant or under its control.

I declare under penalty of perjury [OR use the 37 C.F.R. § 2.20 declaration]
that the foregoing is true and correct.

[SIGNATURE] [NAME] [DATE]

Drafting commentary. TMEP § 1202.03(c) recognizes that ornamental matter may serve as a mark if it identifies a secondary source; the Board described the route in In re Lululemon Athletica Canada Inc., 105 USPQ2d 1684 (TTAB 2013), as showing "that the applicant has used or registered the design in a non-ornamental manner for other goods or services." Paragraphs 2 to 6 establish the primary source; paragraphs 7 and 8 connect the merchandise to it. Facts beat adjectives: the Federal Circuit noted in Vox Populi that advertising and sales volumes "while relevant, are not by themselves dispositive of how consumers perceive a mark." Where the primary business belongs to a related company, explain the control relationship, because use by a related company inures to the applicant's benefit only if the applicant controls the nature and quality of the goods or services; see Trademark Licensing and Quality Control: How Naked Licensing Kills a Brand. Supporting declarations from retailers or trade members who recognize the design as the applicant's follow the same structure, with paragraph 1 describing the declarant's position and basis of knowledge.

Template 7: Alternative-claim language bank

Purpose: preserve every fallback without conceding the lead argument. Owner: the attorney. When to use: in the first response or, at the latest, the request for reconsideration.

A. Section 2(f) in the alternative (ornamental design):
"Applicant maintains that the applied-for mark is inherently distinctive. In the
alternative only, and without conceding that the mark is not inherently
distinctive, Applicant claims that the mark has become distinctive of
Applicant's goods in commerce under Section 2(f), 15 U.S.C. § 1052(f), based on
the evidence in the Declaration of [NAME] (Exhibit [E-40])."

B. Section 2(f) based on five years' use (where available):
"In the alternative, the mark has become distinctive of the goods through
Applicant's substantially exclusive and continuous use of the mark in commerce
for at least the five years immediately before the date of this statement."

C. Supplemental Register in the alternative:
"In the alternative, should the examining attorney maintain the refusal under
Sections 1, 2, and 45, Applicant requests that the application be amended to
seek registration on the Supplemental Register under 15 U.S.C. § 1091 [for
Class [ ] only]."

D. Division to protect accepted classes:
"Applicant requests division of Class [ ] into a new application so that the
remaining classes may proceed to publication."

Drafting commentary. An unqualified Section 2(f) claim concedes that the matter is not inherently distinctive; the "in the alternative only" language preserves the lead argument. The five-year statement (B) is prima facie evidence that the examining attorney may find insufficient, particularly for ornamental matter; it is rarely enough alone. The Supplemental Register under 15 U.S.C. § 1091 requires that the matter be capable of distinguishing the goods, which widely used messages are not, and it confers none of the presumptions of 15 U.S.C. § 1057(b); see 15 U.S.C. § 1094. For an intent-to-use application, the amendment to the Supplemental Register must wait until an acceptable allegation of use is filed (37 C.F.R. § 2.47). The evidence standards for Section 2(f) are covered in Proving Acquired Distinctiveness and Defeating a Genericness Challenge: A Practical Guide.

Template 8: Response outline for an ornamental refusal

Purpose: a structure for answering a refusal under TMEP § 1202.03. Owner: the attorney. When to use: whenever the refusal rests on how the matter appears on the specimen.

RESPONSE TO OFFICE ACTION: Serial No. [NUMBER], [MARK]

I. Summary
   - Refusal: merely ornamental (Sections 1, 2, 45).
   - Response: substitute specimens (Part II); the mark is inherently distinctive
     as used (Part III); alternatively it identifies Applicant as a secondary
     source (Part IV); alternatively Section 2(f) (Part V) [and Supplemental
     Register (Part VI)].

II. Substitute specimens
   - Identify S-[ ] and S-[ ]; verified statement (Template 5).
   - Explain: labels and tags are a conventional place for clothing marks;
     the mark appears small, discrete, and apart from decorative elements.

III. Inherent distinctiveness as used
   - Standard: Section 45; ornamental matter may be inherently distinctive
     where its principal function is to identify source, ornamentation being
     incidental (Soccer Sport Supply; Seabrook factors).
   - Application: [design is not a common basic design; unusual in the field;
     not a refinement of a common decorative motif; creates a separate
     commercial impression].
   - Trade practice evidence: [E-  ].
   - Size and placement: no per se rule (Lululemon); on the substitute
     specimens the mark appears where brands appear.

IV. Secondary source (alternative)
   - Applicant's primary business and registration (Template 6).
   - Consumers encountering the design on apparel will perceive it as
     identifying Applicant's [nursery] as origin or sponsor (TMEP § 1202.03(c)).

V. Section 2(f) (alternative only) (Template 7A)

VI. [Supplemental Register (alternative)] (Template 7C)

VII. Other refusals and requirements: [ ]

VIII. Conclusion: request withdrawal of the refusal and approval for
      publication.

Drafting commentary. Lead with the specimen, because it often ends the case. The inherent-distinctiveness standard comes from In re Soccer Sport Supply Co., 507 F.2d 1400 (C.C.P.A. 1975), and the factors from Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342 (C.C.P.A. 1977). In re Swift & Co., 223 F.2d 950 (C.C.P.A. 1955), supports registration of a design that, as used, is distinctive even though the element is common; In re General Tire & Rubber Co., 404 F.2d 1396 (C.C.P.A. 1969), and In re Chippendales USA, Inc., 622 F.3d 1346 (Fed. Cir. 2010), show the refinement trap to avoid. In the running example, the examining attorney accepted S-2 and S-3 and withdrew the refusal; the secondary-source declaration was filed but not reached, and the alternative Section 2(f) claim was withdrawn before publication.

Template 9: Response outline for an informational matter refusal

Purpose: a structure for answering a refusal under TMEP § 1202.04 where the matter conveys information about the goods or the seller. Owner: the attorney. When to use: when the examining attorney says the words tell buyers something (origin, quality, use, values) rather than identify a source.

I. Summary: refusal; response (re-characterize the matter; evidence of source
   use; alternatives, if any).

II. The matter is not the kind of information the trade conveys
   - What the words mean as applied to [GOODS]; why they are not a statement
     buyers expect sellers to make about these goods.
   - Distinguish the categories in the case law (safety admonitions, origin
     statements, price slogans, mottos).

III. The matter functions as a mark as used
   - Specimens and marketplace use: placement, consistency, ™, "look for"
     advertising (E-  ).
   - Evidence of association with Applicant (Template 4, attribution items).
   - Informational content does not bar registration where the matter also
     identifies a single source (GO & Associates).

IV. Response to examining attorney's evidence (Template 4 chart)

V. Alternatives: [§ 2(f) only if the matter is not a common informational
   statement; otherwise none]

VI. Other refusals and requirements; conclusion.

Drafting commentary. Informational refusals are hard to overcome because they turn on meaning rather than presentation. The Board's examples (PROUDLY MADE IN USA, DRIVE SAFELY, WHY PAY MORE!, ONCE A MARINE, ALWAYS A MARINE) are statements many sellers would make. The applicant's best argument is that its words are not that kind of statement for these goods, combined with real evidence of association. Quote the Federal Circuit in In re GO & Associates: nothing in the Lanham Act "prohibits registration of a mark containing informational matter, so long as the mark also functions to identify a single commercial source." If the words are a common statement in the trade, advise the client to file the house mark instead (Template 13).

Template 10: Response outline for a widely used message refusal

Purpose: a structure for answering a refusal under TMEP § 1202.04(b). Owner: the attorney. When to use: when the examining attorney attaches evidence that the public uses the words to express a familiar sentiment.

I. Summary: refusal; response (the record does not establish a widely used
   message for the identified goods; the matter identifies Applicant;
   the refusal lacks a stated standard).

II. Legal standard
   - Section 45; consumer perception on the identified goods.
   - Examining attorney's initial burden (Brunetti).
   - Commonality alone is not the test; the Board must explain why this matter
     cannot serve as a mark when other commonplace matter can (Brunetti).
   - Informational content does not bar registration where the matter also
     identifies source (GO & Associates).

III. The third-party evidence (Template 4)
   - [NUMBER] items are copies of Applicant's own design post-dating launch;
     Applicant has policed them (E-  ).
   - [NUMBER] items are unrelated contexts that say nothing about perception on
     [GOODS].
   - [NUMBER] items attribute the phrase to Applicant.
   - Remaining items: address individually.

IV. Evidence of association with Applicant
   - Coinage and launch; consistent use as a brand; unsolicited media;
     customer communications; retailer declarations; [survey].

V. Alternatives: [usually none; § 2(f) only if the record shows the matter is
   not a widely used message at all]

VI. Other refusals and requirements; conclusion.

Drafting commentary. Be honest with the client before drafting. Where independent pre-existing use on the same goods is substantial, the Board will likely affirm, and the Federal Circuit reviews that finding for substantial evidence. The Brunetti argument is real but limited: the court vacated because the Board "failed to articulate a satisfactory explanation," not because the word was registrable, and the dissent would have affirmed. Do not argue the First Amendment; the Federal Circuit rejected that challenge in GO & Associates and rejected viewpoint-discrimination and retaliation arguments in In re Brunetti. Do not rely on prior registrations as precedent; In re Nett Designs, Inc., 236 F.3d 1339 (Fed. Cir. 2001), holds they do not bind the Board, though Brunetti treats inconsistency as relevant to whether the Board has a coherent standard. In the running example, the Template 4 chart for BLOOM ANYWAY showed nineteen independent uses on shirts and totes before Coyote Bloom's launch, many in motivational and gardening contexts. Counsel advised against further investment; the client filed COYOTE BLOOM (word) and a composite COYOTE BLOOM BLOOM ANYWAY, with the hang tag (S-4) as a future specimen, and allowed the slogan application to lapse after the new filings.

Template 11: Response outline for a hashtag refusal

Purpose: a structure for answering a refusal under TMEP § 1202.18. Owner: the attorney. When to use: when matter including a # is refused because it would be perceived as a social media tag.

I. Summary: refusal; response (substitute specimen showing brand use; the
   wording is distinctive; the # does not detract from source significance).

II. The wording apart from the #
   - [WORDING] is not descriptive, informational, or a common message for
     [GOODS/SERVICES]; no third-party use of record.

III. The matter as used functions as a mark
   - Substitute specimen: [website, packaging, advertising for services] showing
     #[WORDING] identifying Applicant's goods/services, not inviting users to tag
     posts (S-  ; verified statement).
   - Consistency of use; "look for" use; ™.

IV. Response to examining attorney's evidence (posts using the hashtag as a tag)

V. Alternatives: amend the drawing only if the # is not a material element
   [rarely permitted]; otherwise consider a new application for [WORDING]
   without the #.

VI. Conclusion.

Drafting commentary. A hashtag gets no special credit for the #. If the specimen shows the applicant inviting customers to tag their posts, the examining attorney will treat the matter as a tag, and the applicant's own social media becomes evidence against it. The cure is a specimen showing the matter used as the name of the goods or services, which may be easier for the wording without the #. Removing the # from the drawing may be treated as a material alteration under 37 C.F.R. § 2.72, so a new application is often cleaner. In the running example, #BLOOMANYWAY inherited the problem of the underlying words and was not pursued.

Template 12: Request for reconsideration and notice of appeal package

Purpose: add final evidence to the record and preserve the appeal after a final refusal. Owner: the attorney. When to use: within the response period for a final action.

REQUEST FOR RECONSIDERATION: Serial No. [NUMBER]

I. New evidence (filed now because the record closes on appeal):
   - [Declarations, survey, additional captures, expanded Template 4 chart].
II. New or refined arguments, including any alternative claims not previously
    made (Template 7).
III. Request: withdraw the final refusal and approve for publication.

NOTICE OF APPEAL (filed the same day)
Applicant appeals to the Trademark Trial and Appeal Board from the final
refusal dated [DATE] as to Class(es) [ ], and pays the fee for [NUMBER]
class(es).

Drafting commentary. File both on the same day. A request for reconsideration under 37 C.F.R. § 2.63 does not extend the appeal deadline, and the appeal under 15 U.S.C. § 1070 and 37 C.F.R. § 2.142 must be filed within the response period. The Board ordinarily suspends the appeal and remands for consideration of the request. After the appeal is filed, the record is closed under § 2.142(d), so this is the last ordinary opportunity to add evidence. The appeal brief is due 60 days after the appeal or resumption. Review of the Board's decision lies in the Federal Circuit or district court under 15 U.S.C. § 1071, with Federal Circuit review of the function finding for substantial evidence under Dickinson v. Zurko, 527 U.S. 150 (1999). Appeal practice is collected in the TTAB Practice Toolkit: Oppositions, Cancellations, and the Trademark Trial and Appeal Board from Pleading to Appeal.

Template 13: Merchandise labeling guide for clients

Purpose: teach a merchandise client how to use a brand so that it functions as a mark and produces acceptable specimens. Owner: the attorney, given to the client. When to use: at onboarding, before filing, and after any ornamental refusal.

Drafting commentary. The guide translates the commercial-impression factors of TMEP § 1202.03(a) and the specimen rules of 37 C.F.R. § 2.56 into instructions a merchandise team can follow. Coordinate with any licensing program; licensees' labels must carry the mark consistently and under the client's control, a point developed in Negotiating a Publishing or Merchandising License: A Practical Guide. Print-on-demand and marketplace sellers should confirm that the platform's product templates allow a custom neck label or tag; many default to the blank manufacturer's label, which leaves the seller without a conventional specimen.

Template 14: Letter-of-protest and opposition evidence outline

Purpose: assemble evidence for a third party who wants to stop registration of a common phrase or ornamental design. Owner: the third party's counsel. When to use: while an application is pending (letter of protest) or after publication (opposition) or registration (cancellation).

EVIDENCE OUTLINE: [MARK], Serial/Reg. No. [NUMBER]

1. The phrase and its public meaning (dictionary, news, social media, with
   dates).
2. Independent uses on the identified goods, before the applicant's claimed
   first-use date: [list with URLs, dates, captures].
3. Independent uses on the identified goods after that date: [list].
4. Applicant's own use: specimens and listings showing the phrase displayed
   as a message, matching others' use.
5. Our client's use: dates, goods, how displayed, sales.
6. Ground: fails to function as a mark (Sections 1, 2, 3, 45);
   [other grounds, if any].

Drafting commentary. A letter of protest is limited to relevant evidence on a ground for refusal and goes to the Director's office for a decision whether to forward it to the examining attorney; the procedure and its limits are explained in Expungement, Reexamination, and Letters of Protest: The Trademark Modernization Act in Practice. After publication, oppose under 15 U.S.C. § 1063; after registration, petition to cancel under 15 U.S.C. § 1064. D.C. One Wholesaler v. Chien is the model record: many vendors, many goods, the phrase displayed as a message, and the registrant's use matching everyone else's. For pleading mechanics, see Filing a TTAB Notice of Opposition: A Practical Checklist.

Template 15: Deadline tracker

Purpose: keep every date in one place. Owner: docketing, with the attorney. When to use: from intake to registration or final disposition.

Drafting commentary. Confirm every period against the office action and the current rules; periods for some Madrid-based applications have differed. The statement-of-use deadline after a notice of allowance runs six months, extendable in six-month increments up to a statutory limit, under 15 U.S.C. § 1051(d).

Practical takeaways

• Start with the triage memo and the specimen audit; most ornamental refusals end with a label the client already has.
• Prove dates. Every substitute specimen needs a verified statement and records behind it.
• Use the secondary-source declaration where the merchandise grew out of an established business.
• Classify every item of third-party evidence, and tell the client honestly what the count means.
• Preserve alternatives in writing, and put all evidence in before the appeal closes the record.
• Give merchandise clients the labeling guide before they file, not after the refusal.

This toolkit is general information, not legal advice for any particular situation. Adapt every template to the facts and confirm current USPTO rules and forms before use.

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Related Articles

• Failure to Function and Ornamental Refusals: Why Slogans, Hashtags, and Merchandise Designs Get Rejected: the doctrine behind each template.
• Trademark Licensing and Quality Control: How Naked Licensing Kills a Brand: control over related-company and licensee use.
• Expungement, Reexamination, and Letters of Protest: The Trademark Modernization Act in Practice: third-party tools.
• Rebranding Without Regret: Clearance, Transition, and Protecting the Old Mark While Launching the New One: clearing a new brand and protecting the old mark during a rebrand.

Related Guides

• Overcoming a Failure-to-Function or Ornamental Refusal: A Practical Guide: the step-by-step process these templates support.
• Proving Acquired Distinctiveness and Defeating a Genericness Challenge: A Practical Guide: Section 2(f) evidence.
• Intent-to-Use Trademark Applications: A Practical Guide: amending to Section 1(b).
• Negotiating a Publishing or Merchandising License: A Practical Guide: labeling and control in licensed merchandise.
• Running a Rebrand: A Practical Legal Guide: clearing a new brand and protecting the old mark during a rebrand.

Related Checklists

• Failure-to-Function Refusal Response Checklist: A Practical Checklist: the task list that calls these templates.
• Trademark Specimen Preparation Checklist: A Practical Checklist: specimen rules.
• Trademark Statement of Use Checklist: A Practical Checklist: use filings after amendment to Section 1(b).
• Filing a TTAB Notice of Opposition: A Practical Checklist: the third party's route.
• International Trademark Filing Strategy Checklist: A Practical Checklist: planning foreign filings once the U.S. application is clean.
• Rebrand Legal Checklist: A Practical Checklist: clearing a new brand and protecting the old mark during a rebrand.

Related Toolkits

• Distinctiveness Toolkit: Secondary Meaning Declarations, Genericness Surveys, and Brand Usage Guidelines: companion declarations and surveys.
• TTAB Practice Toolkit: Oppositions, Cancellations, and the Trademark Trial and Appeal Board from Pleading to Appeal: appeals and inter partes proceedings.
• Brand Ownership Toolkit: Assignment Agreements, Founder IP Clauses, and Ownership Evidence Files: confirming the right applicant.
• Trademark Registration Toolkit: A Roadmap from Brand Idea to Federal Registration and Maintenance: the full filing roadmap.
• Rebrand Toolkit: Clearance Memos, Transition Plans, and Legacy Mark Maintenance Records: clearing a new brand and protecting the old mark during a rebrand.