The Federal Circuit recently issued a significant decision that impacts trademark owners who conduct business on the internet. As discussed in further detail below, the Federal Circuit in In re Michael Sones, No. 2009-1140 (Fed. Cir. Dec. 23, 2009), has stated that specimens of use filed in support of trademark applications which consist of website printouts do not necessarily have to contain a photograph of the goods in question.
To obtain a federal trademark registration under Section 1(a) of the Lanham Act, applicants are required to submit evidence — or “specimens” — to the U.S. Patent and Trademark Office (PTO) showing use of the trademark in commerce in connection with the goods or services for which applicant has applied to register its mark.1
The PTO has long accepted tags and labels that are applied to goods, such as hang tags for clothing or labels for CDs containing computer software, as suitable specimens. It has also accepted displays associated with the offering of goods for sale, such as shelf-talkers or display boards used in retail stores. Instruction or assembly manuals that are shipped or sold with goods can also function as suitable specimens. In addition, pages from catalogs can sometimes constitute acceptable specimens of use.
Materials considered to be mere advertising for goods, however, can never serve as an acceptable specimen of use. Since the failure to file an acceptable specimen of use with the PTO in a timely manner will prevent an application based on “use” from maturing into a registration, it is important to know how to use a mark in a manner that will result in a proper specimen. This is often trickiest when trying to use web pages as specimens of use.
To determine whether a catalog is an acceptable specimen and not mere advertising, for many years the PTO had utilized a three part test:
(1) The catalog page must include a picture of the relevant goods;
(2) The catalog page must show the mark sufficiently near the picture of the goods to associate the mark with the goods; and
(3) The catalog page must include information necessary to order the goods (e.g., an order form or a phone number, mailing address, or e-mail address for placing orders).
Lands’ End Inc. v. Manbeck, 797 F.Supp. 511 , 514 (E.D. Va. 1992) (setting forth the test).
In 2004, the Trademark Trial and Appeal Board (TTAB) applied the Lands’ End test to website specimens, stating that “a website page which displays a product, and provides a means of ordering the product, can constitute a ‘display associated with the goods,’ as long as the mark appears on the webpage in a manner in which the mark is associated with the goods.” In re Dell, Inc., 71 U.S.P.Q.2d 1725, 1727 (T.T.A.B. 2004).
Post-Dell, the TTAB had been steadfast in applying a bright-line test that required website specimens to contain a photograph of the goods in question as per the first Lands’ End factor.2 See, e.g., In re Miss. Cheese Straw Factory, Inc., Ser. No. 76/617,223 (T.T.A.B. Oct. 21, 2004); In re Felix Mauro Torres, Ser. No. 78/621,656 (T.T.A.B. May 12, 2009).
Not surprisingly, the trademark examiner and TTAB applied the same bright-line test in regards to Michael Sones’ use-based application. In support of an application for the mark ONE NATION UNDER GOD for “charity bracelets,” Michael Sones submitted a printout from a web page as a specimen of use. The web page printout contained the wording “ONE NATION UNDER GOD™ Charity Bracelet >> for $2.00” and featured an “Add to Cart” button which internet users could click on to purchase the product. The web page did not include a photograph of the bracelet, and next to the product description was a box that said “Photo not availble [sic].” Relying on the Lands’ End factors, the PTO examiner rejected Sones’ specimen because it failed to show a photograph of the bracelets. After an unsuccessful appeal to the TTAB, Sones appealed the matter to the Federal Circuit.
Dismissing the bright-line application of the first Lands’ End factor, the Federal Circuit held displays associated with goods do not necessarily need to contain a photograph of the goods and that a specimen of use from a website is acceptable if it “in some way evince[s] that the mark is ‘associated’ with the goods and serves as an indicator of source.” Where a photograph is not included in an electronic or printed display specimen, however, the Court stated that it will be important that the “actual features or inherent characteristics of the goods are recognizable from the textual description” in the specimen and that the mark for which registration is sought is sufficiently associated with the goods. While the Federal Circuit cautioned that the absence of a photograph of the goods could render website specimens ineffective in certain instances, it noted that “a picture is not the only way to show an association between a mark and the goods.”
The Court provided two key reasons for its decision. First, neither the Lands’ End decision nor the federal trademark statute require that specimens of use contain pictures of the corresponding products. Second, specimens of use for goods consisting of labels, containers, and displays are routinely accepted by the PTO whether or not they contain product photographs. Thus, the Court concluded websites do not necessarily need to contain a photograph of the goods to create an association between the mark and the goods offered thereunder.
In light of Sones, companies who conduct business on the internet or who promote their products through catalogs (either printed or electronic) should benefit from the flexibility of no longer always having to submit specimens that bear a photograph of the subject goods. This could be particularly useful where the goods are not easy to photograph or if including a photograph in the display is impracticable. Nevertheless, until the PTO has shown a pattern of accepting website printouts or other displays that do not include photographs of the subject goods, the safest practice still is to submit a specimen which shows the trademark in close proximity to a photograph of the goods with which the mark is used.3
Your attorneys in the Trademark, Copyright, Advertising and Brand Management Group at Dorsey & Whitney can discuss these issues with you in further detail.
1 If a U.S. trademark application is based on an existing foreign application or registration, the applicant is not required to prove use of its mark for the U.S. registration to issue. The Sones decision, and this article, addresses trademark applications based on “use” only.
2 The TTAB has been less restrictive with respect to the third Lands’ End factor. For example, in In re Valenite, 84 U.S.P.Q.2d 1346, 1350 (T.T.A.B. 2007), the TTAB held that, for specialized and highly technical products, a webpage need only provide “the prospective purchaser with sufficient information that the customer can select a product and call customer service to confirm the correctness of the selection and place an order.”
3 As mentioned above, it is also necessary to indicate the pricing for the product (if feasible) and to provide a prospective purchaser with sufficient information to facilitate ordering of the product (e.g., an online shopping cart, telephone number, or fax number).