Before Prost, Lourie and Stoll. Appeal from the Trademark Trial and Appeal Board.
Summary: In evaluating whether a webpage printout is an acceptable specimen of use for a trademark in connection with goods, the USPTO may look for information on the webpage essential to purchasing decisions such as price for the goods, minimum quantities one may order, accepted methods of payment, and shipping information. If the webpage simply provides a phone number or email address to contact for sales information, this is likely not enough to show the specimen is a point-of-sale display and thus an acceptable specimen of use.
Siny Corp. (“Siny”) applied to register the mark CASALANA for fabric for use in the manufacture of apparel. The trademark application was based on use in commerce. Siny submitted a specimen of use consisting of a webpage printout. The Examining Attorney initially refused registration because the specimen was “mere advertising material,” and did not include a means for ordering the goods. Siny responded by arguing that the webpage specimen included a means to purchase the goods, namely, language at the bottom of the webpage stating “For sales information:” followed by a phone number and email address. The Examining Attorney rejected this argument, and found that this text alone was insufficient for consumers to make a purchase. Siny appealed to the TTAB, and the TTAB affirmed the refusal.
Siny appealed again, and the Federal Circuit affirmed. The issue on appeal was whether the specimen qualifies as a display associated with the goods under the Lanham Act. The Federal Circuit stated that “mere advertising is not enough to qualify as such a display,” and an important consideration is whether the display is at a point-of-sale location. In its decision, the Board noted the absence of information essential to a purchasing decision, such as (1) price or range of prices for the goods, (2) minimum quantities one may order, (3) accepted methods of payment, or (4) how the goods would be shipped. The Board assumed the phone number listed in the specimen would connect a potential customer to sales personnel, but 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.” Siny argued on appeal that the Board applied “overly rigid requirements” in determining whether the webpage specimen qualified as a display associated with the goods. The Federal Circuit disagreed and determined that the Board carefully considered the webpage’s contents and “the specimen did not cross the line from mere advertising to an acceptable display associated with the goods.”