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Nonprecedential Opinion Issued January 14, 2019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The CAFC had previously issued a nonprecedential opinion on January 14, 2019, but issued a precedential opinion on April 10, 2019 for this case pursuant to a request by the United States Patent and Trademark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.
