In our experience, trademark applicants are often confused about the specimen requirements submitted with a trademark application involving goods (as opposed to services). The specimen is used to prove “use in commerce.” Use in commerce under the Lanham Act is deemed to be when the mark is “placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto . . . and when the goods are sold or transported in commerce.” An appropriate specimen may consist of an image of the product packaging or the product itself showing the trademark. If the goods are not marked in this manner but are associated with the trademark in a “display,” such as webpage, then the examining attorney looks for other indicia of use in commerce.
Under USPTO practice and decisions, if a webpage is a “point-of-sale” for the goods in question then the webpage will be an acceptable specimen. Whether a webpage is a “point of sale” is a fact based determination but typically involves an assessment of whether one can purchase the goods online and whether that is obvious from the specimen. But what happens if the goods are not amenable to online purchase?
This was precisely the question before the United States Court of Appeals for the Federal Circuit in a very recent case, In Re: Siny Corp., which involved Siny Corporation’s (“Siny”) attempt to register an in-use trademark, CASALANA for “knit pile fabric made with wool for use as a textile in the manufacture of outwear, gloves, apparel, and accessories”. To prove use in commerce, Siny submitted a webpage printout with its application but, as the examining attorney pointed out, it did not show any means for ordering the goods. Siny then submitted a substitute specimen consisting of a webpage showing a telephone number and email address with the text: “For Sales Information”. The examining attorney rejected the substitute specimen because the webpage did not contain ordering information such as quantity, cost, payment options, or shipping information.
In a split decision, The Trademark Trial and Appeal Board (“Board”) affirmed the examining attorney’s decision. Notably, the Board wrote that it appreciated Siny’s contention that because the goods were industrial materials, a purchase would require assistance from sales personnel, but “if virtually all important aspects of the transaction must be determined from information extraneous to the webpage, then the webpage is not a point-of-sale.” Siny appealed to the United States Court of Appeals for the Federal Circuit.
The Court of the Appeals noted that the central issue is whether a webpage specimen qualifies as a display associated with the goods under the Lanham Act. Mere advertising, according to the Court, is not enough to qualify as a display. Citing various legal precedents, the Court held that display must reflect that it is a point of sale location. The Court of Appeals disagreed with Siny’s argument that the Board applied improperly rigid requirements. Instead, the Court upheld the Board’s conclusion that the specimen “did not cross the line from mere advertising to an acceptable display associated with the goods.”
The bottom line is that for goods, a specimen must be more than a mere advertisement and for complex industrial products, the applicant must submit more than just a webpage that permits the consumer to seek additional information but not the ultimate purchase.
— Adam G. Garson, Esq.
*Originally posted May 2, 2019