December 29, 2009 The U.S Court of Appeals for the Federal Circuit recently reversed two lower tribunals by holding that there is no requirement that a trademark’s specimen of use must include a picture when the specimen derives from the Internet. By way of review, there are two types of trademark applications: use-based and intent-to-use. In a use-based trademark application (§1(a) application), the applicant files a declaration of use and a specimen. In an intent to use trademark application (§1(b) application), the applicant files a Statement of Use and a specimen. The Federal Circuit has now clarified that Web-based specimens of use are subject to essentially the same rules as any other specimen. Previously, in a Web-based application, the PTO often required a picture showing the mark and product in close proximity. The Applicant can now fight such rejections. This is particularly important in an intent to use application where, after rejection of a specimen, the Applicant must submit another specimen of use and an affidavit or declaration stating that the new specimen existed before the expiration of the deadline for filing the Statement of Use (usually six months). If the deadline has already passed, then the applicant is too late and must argue for acceptance of the previous specimen or start all over. This rule was established in the December 23, 2009 opinion of In re Michael Sones Appeal No. 2009-1140 (December 23, 2009) [precedential]., Mr. Sones’ intent to use trademark application was allowed and Mr. Sones timely submitted a Statement of Use with a specimen of use consisting of two pages from a website. The submitted webpages contain a product listing “ONE NATION UNDER GOD TM CHARITY BRACELT >> FOR $2.00”. The pages also display “shopping cart” functionality for ordering, including buttons for “view cart” and “add to cart”. Next to the description is a graphic saying “photo not availble [sic]”. The PTO rejected the specimen because the specimen “does not show a picture of the goods in close proximity to the mark”. Mr. Sones and the PTO then argued about the need for a specimen with a photo, the PTO finally rejected Mr. Sones’ application and Mr. Sones appealed to the PTO Trademark Trial and Appeal Board (“TTAB”). The TTAB affirmed the rejection. Mr. Sones then appealed the TTAB decision to the Federal Circuit arguing that the Board wrongfully imposed a bright-line rule that a trademark specimen of use taken from a website must contain a picture. The Federal Circuit agreed that the PTO was imposing such a bright-line rule and held that such a rule was improper. The Federal Circuit noted that for brick-and-mortar stores, there is no rule that specimens of use must show pictures. The Court reviewed prior holdings where tangible specimens without pictures of the goods (including labels, containers, and displays) were found to show use in commerce by describing the goods in sufficient detail in relation to the marks. The Court noted that the PTO recognizes that “[i]n effect, the website is an electronic retail store, and the web page is a shelf-talker or banner which encourages the consumer to buy the product. A consumer using the link on the web page to purchase the goods is the equivalent of a consumer seeing a shelf-talker and taking the item to the cashier in a store to purchase it.” Federal Circuit Makes It Easier To Get A Trademark Registration With A Website Specimen
The court then concluded that “a picture is not a mandatory requirement for a website-based specimen of use, and that the test for an acceptable website-based specimen, just as any other specimen, is simply that it must in some way evince that the mark is “associated” with the goods and serves as an indicator of source.” However, the Court stated that “a visual depiction of a product is an important consideration in determining whether a submitted specimen sufficiently associates a mark with the source of the goods.” The Court cautioned that while a picture is not the only way to show an association between a mark and goods, the absence of a picture may render website specimens ineffective in many cases.
The Federal Circuit remanded the case and ordered the PTO to consider the evidence as a whole to determine if the specimen sufficiently associates his mark with his charity bracelets so as to “identify and distinguish the goods.” The relevant factors include, for example, whether the webpages have a “point of sale nature,” “whether the actual features or inherent characteristics of the goods are recognizable from the textual description, given that the more standard the product is, the less comprehensive the textual description need be” and “use of the designation ‘TM’” which “lends a degree of visual prominence to the term.”
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