Absent information essential for customers to make a purchasing decision, a webpage specimen is not an acceptable display associated with the goods, but a mere advertisement
| May 10, 2019
In re: Siny Corp.
Nonprecedential Opinion Issued January 14, 2019
Precedential Opinion Issued April 10. 2019
Summary
The Trademark Trial and Appeal Board ruled, and the Court of Appeals for the Federal Circuit affirmed, a webpage specimen lacking information sufficient for a customer to make a decision to purchase was mere advertising material and not an acceptable specimen of use for goods. An indication of a phone number and email address under “For sales information” on a website showing the goods and the trademark used in close proximity was found insufficient for consumers to actually make a purchase, as it only shows how consumers could obtain more information necessary to make a purchase.
The CAFC had previously issued a nonprecedential opinion on January 14, 2019, but issued a precedential opinion on April 10, 2019 for this case pursuant to a request by the United States Patent and Trademark Office.
単なる宣伝資料は、商品の使用証明として不適切である。商品の近くに商標の表示されているウェブサイトにおいて、「販売情報」として電話番号とメールアドレスが掲載されていたとしても、それは、消費者が購入するために必要な情報を取得するための手段を示しているだけで、そのウェブサイトに掲載されている情報のみで消費者が実際に商品を購入することはできない。よって、そのようなウェブサイトは、商品についての単なる宣伝資料であり、使用証明にはならない。
Details
Siny Corp. filed an application for a trademark, seeking to register the standard character mark CASALANA for “Knit pile fabric made with wool for use as a textile in the manufacture of outerwear, gloves, apparel, and accessories.” To meet the requirements of a use in commerce application under Section 1(a) of the Lanham Act, 15 U.S.C. § 1051(a), the applicant submitted a specimen of use for goods, a webpage showing the trademark used in close proximity to the photograph of the goods. The examining attorney refused registration, finding the specimen of use to be a mere advertising material, failing to show the required use in commerce for the goods. The applicant appealed to the Trademark Trial and Appeal Board, and the Board affirmed in a split decision. The Board found that the specimen submitted by the applicant is submitted as a “display associated with the goods,” and for such a display to be found an acceptable specimen of use, it must be a “point of sale” display. The Board then found that the website submitted by the applicant lacked information sufficient for a customer to make a decision to purchase, such as “a price (or even a range of prices) for the goods, the minimum quantities one may order, accepted methods of payment, or how the goods would be shipped.” While the Board appreciated the applicant’s contention that the goods were “industrial materials for use by customers in manufacture,” and the sales transaction must involve the applicant’s sales personnel, the Board also found that “…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.” The Board added that in cases where the goods are technical and specialized, and the applicant and examining attorney disagree on the point-of-sale nature of a submitted specimen, the applicant is advised to provide additional evidence and information regarding the manner in which purchases are made, such as providing verified statements from those knowledgeable about what happens and how.
The CAFC agreed with the Board. The CAFC disagreed with the applicant that the Board applied “overly rigid requirements” in reaching the determination that the specimen submitted by the applicant did not qualify as a display associated with the goods, and noted that the Board’s decision was made by carefully considering the contents of the submitted specimen.
Takeaway
- Catalogs and webpages that merely indicate contact information are usually not good specimens.
- If the goods are highly technical or specialized such that price/quantities/methods of payment/how goods will be shipped cannot be indicated on a display associated with the goods (i.e., website), consider submitting an affidavit.
- The USTPO has been reviewing specimens of use a lot more closely in recent years, and finding appropriate specimens of use for submission has become even more crucial.
A mark found to be disparaging.
| May 28, 2014
In re Geller
May 13, 2014
Panel: Newman, O’Malley, Wallach. Opinion by Wallach
Summary
The CAFC affirmed the Trademark Trial and Appeal Board’s refusal to register the mark STOP THE ISLAMISATION OF AMERICA in connection with the services of “understanding and preventing terrorism” because the mark may be disparaging to American Muslims pursuant to § 2(a) of the Trademark Act.
米国連邦巡回裁判所（CAFC）は、STOP THE ISLAMISATION OF AMERICA商標の出願は、米国商標法第2条(a)に基き、米国のイスラム教徒に対して中傷的（disparaging）であるとして、登録を却下した商標審判部（TTAB）の判断を支持した。
Designer’s Connection with Paris Insufficient to Overcome a Section 2(e)(3) Refusal
| October 24, 2012
In re Miracle Tuesday, LLC
October 4, 2012
Panel: Rader, Linn, O’Malley. Opinion by O’Malley
Summary
The U.S. Court of Appeals for the Federal Circuit affirmed the decision of the Trademark Trial and Appeal Board (“the Board”), refusing to register the mark JPK PARIS 75 and design on the grounds that it is primarily geographically deceptively misdescriptive under Section 2(e)(3) of the Lanham Act, 15 U.S.C. § 1052(e)(3). While the CAFC does not endorse a rule that the goods need to be manufactured in the named place to originate there, there must be some other direct connection between the goods and the place identified in the mark. In this case, the CAFC found there is no evidence of a current connection between the goods and Paris.
商標審判は、商標「JPK PARIS 75」は、「産地について誤信を生じさせる商標（primarily geographically deceptively misdescriptive）」であると認定し、CAFCは、これを支持した。 CAFCは、商品がその産地にて製造される必要があるとは示さなかったものの、商品とその産地には直接的な関係が必要であると示した。本件では、商品とパリに直接的な関係が存在するという証拠はなかった
Tags: geographical indication > geographically misdescriptive > Trademark
Using Trademark in Categories Other than the One as Filed May Result in Abandonment
| August 15, 2012
LENS.COM, INC. v. 1-800 CONTACTS, INC.
August 3, 2012
Panel: Newman, Linn and Moore. Opinion by Linn.
Summary
Lens.com, Inc. (“Lens.com”) appeals a decision of the Trademark Trial and Appeal Board (“Board”) granting a motion for summary judgment by 1-800 Contacts, Inc. (“1-800 Contacts”) and ordering the cancellation of Lens.com’s registration for the mark LENS due to nonuse. The mark was filed to be used in connection with computer software, but the business of Lens.com is in the field of retail sales of contact lenses. The issue at dispute is whether software incidentally distributed in connection with retail business in the context of an internet service constitutes a “good in commerce.” The court applies a three-prong test established in non-internet-related case law to the current case in finding nonuse of the mark, and distinguishes the current case from an Eleventh Circuit decision.
Lens.com公司就商标裁决上诉委员会批准关于注销 LENS 商标登记的动议提出上诉。 该动议由1-800 Contacts公司提出，称lens.com已停止使用该商标。该商标注册为“计算机软件相关业务”的商标，而Lens.com仅在隐形眼镜零售领域开展业务。该案中的争议问题是互联网零售业务中偶尔附带发送的软件是否构成“商品”。法院利用了建立在非互联网相关案件的判例法上的“三因素测试”认定该商标已停止使用， 并且将本案与第十一巡回法庭判决的一个互联网相关案件加以对比区分。
Tags: abandonment > cancellation > Trademark > use in trade
BD Stumbles on the Fine Functionality Line between Patents and Trademarks
| May 2, 2012
In Re Becton, Dickinson and Company
April 12, 2012
Panel: Bryson, Clevenger, and Linn. Opinion by Clevenger. Dissent by Linn.
Summary
BD appealed a decision of the USPTO’s Trademark Trial and Appeal Board (TTAB) that a requested trademark registration for a design of a closure cap for blood collection tubes could 
not be trademarked because the design is functional. The CAFC affirmed the TTAB ruling relying heavily on prior BD utility patents and advertisements as evidencing functionality. Attempting to convert functional aspects into a trademark due to acquired secondary meaning will not hold. A company looking to protect a product across multiple forms of intellectual property needs to clearly identify, from the advent of seeking protection, which aspects are considered functional and which are for design purposes. The designation of function and design should be maintained in all ways the product is protected and promoted.
Tags: design > design patents > Trademark > utility patent
