Federal Circuit Clarifies USPTO Requirements Regarding Adequacy of Webpage as “Specimen of Use” in Application for Federal Registration of Trademark
AuthorsGerald P. Schneeweis , David J. Marr
In re: Siny Corp. (Fed. Cir. 2018-1077, April 10, 2019)
Trademark owners applying for federal registration of their trademark or service mark are required to submit to the U.S. Patent & Trademark Office (USPTO) a “specimen of use” that demonstrates their use of the proposed mark “in commerce” to identify the source of the goods or services to which the mark applies. (15 U.S.C. Sections 1051 (a) (1), 1051 (c) and 1051 (d) (1).)
For trademarks, which identify the source of goods, this can be accomplished by submission of a specimen of use that shows placement of the mark in any manner:
1) on the goods themselves;
2) on their containers;
3) on displays associated with the goods;
4) on tags or labels affixed to the goods or their containers; or
5) if the nature of the goods makes any of the above impracticable, then on documents associated with the goods or their sale.
(15 U.S.C. section 1127).
Most manufacturers, distributors, and retailers sell their products (“goods”) via websites, and it is therefore common for their specimen of use to consist of a website page showing the trademark in close proximity to the goods. The USPTO will accept a screen image of such a webpage “display associated with the goods” if it constitutes a “point of sale” display and not “mere advertising.”
How does a webpage display constitute a “point of sale,” and not just “advertising”? As textile manufacturer Siny Corp. recently learned, courtesy of the Federal Circuit Court of Appeals, by giving sufficient sales information that allows the prospective customers to place an order, and not merely to “contact” the company to “learn more” about the product.
On April 10, 2019, the Federal Circuit Court of Appeals issued a precedential opinion in In Re: Siny Corp. (Fed. Cir. 2018-1077) affirming a 2-1 decision by the Trademark Trial & Appeal Board (TTAB), which had upheld the USPTO’s refusal of Siny Corp.’s federal trademark application on the grounds that its webpage specimen of use did not demonstrate a “point of sale,” and thus was insufficient to establish its “use in commerce” as required for federal registration.
The Federal Circuit had issued its non-precedential opinion upholding the TTAB’s ruling in this case on March 7, 2019, but subsequently the USPTO Solicitor requested that the opinion be certified as “precedential” in order to “…provide certainty to future applicants regarding what satisfies the statutory requirements for ‘displays associated’ with goods.” The Federal Circuit panel then re-issued its opinion as “precedential” on April 10, 2019.
The unsuccessful applicant, Siny Corp. (dba Glenoit Fabrics, a division of Monterey Mills), is a textile manufacturer which makes wool knit fabric used in the manufacture of “outerwear, gloves, apparel and accessories.” In September of 2015, it submitted an application with USPTO for federal registration of its “CASALANA” trademark in connection with one of its “Most Popular Fabrics.” Its original application included a specimen of use consisting of a webpage from its website which, although it contained a photo of sample “CASALANA” fabric and the word mark, did not contain ordering information. The USPTO examining attorney thus rejected the specimen. Siny then submitted a “substitute specimen,” which consisted of the same webpage, but with additional text that included:
“For sales information” followed by a phone number and an email address. (See web page images included in the opinion here.)
The USPTO examining attorney rejected the substitute specimen and issued a Notice of Final Refusal of the application, finding that the text alone was “…insufficient for consumers to make a purchase”; rather, it only indicated how consumers could obtain more information to make a purchase. Siny then appealed the USPTO’s refusal to a panel of the TTAB, which upheld the refusal, with one member dissenting.
Siny then appealed to the Federal Circuit, which affirmed the TTAB’s decision.
The Federal Circuit Court of Appeals, conducting a de novo review of the record, found the webpage lacked sufficient information to constitute use of the mark “in commerce” because it failed to include the crucial features of a “point of sale” and was thus “mere advertising.” (Slip opinion, pp. 5-8.)
The court acknowledged Siny was correct that what constitutes a “display associated with the goods” is a factual question to be determined on a case-by-case basis, and that it has cautioned against bright-line rules in reaching this determination. (Id. at p. 8.) It then found that there was substantial evidence to support the TTAB’s order upholding the refusal of registration. It pointed to the Board’s findings that the webpage contained insufficient information essential to a purchasing decision, since it lacked details regarding:
-a price for the goods, or even a range of prices;
-minimum quantities one may order;
-accepted methods of payment;
-how the goods would be shipped.
(Id. at p. 5.)
The court agreed with Siny that, since it manufactures industrial materials that are, in turn, used by finished clothing and accessory manufacturers, “the ultimate sales transaction may have to involve some assistance from Siny’s sales personnel.” (Id.) However, the Court still upheld the Board’s determination that providing only the telephone number and email address link, without a way to place an order, was insufficient:
“…if virtually all important aspects of the transaction must be determined from information extraneous to the web page, then the web page is not a point of sale.”
While the Federal Circuit’s opinion (like the TTAB’s decision) points to existing authority and essentially restates and clarifies the USPTO’s practice, it did acknowledge that what constitutes a webpage “display associated with the goods” (and thus used “in commerce”) is not always a simple determination capable of a “bright line” test. Moreover, one of the TTAB panel members concluded that Siny had submitted a sufficient substitute specimen of use.
However, the court’s opinion does give additional guidance to trademark registration applicants that to avoid being considered “mere advertising,” their website display needs to provide a “means to purchase the goods” by serving as a “point of sale” to allow the consumer to make an order of the goods on the website itself. A webpage with a link to, for example an “order@___” email address where a customer’s order could be processed would probably be sufficient.
Clark Hill has a full-service group of intellectual property attorneys throughout the country who represent businesses and individuals on trademark, copyright, patent and trade secrets issues in the U.S. Patent & Trademark Office, Trademark Trial & Appeal Board, U.S. Copyright Office and in federal and state courts.
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