Federal Circuit Allows Website Print-out Without Image To Qualify As A Trademark’s Commercial Use Specimen

Federal Circuit Allows Website Print-out Without Image To Qualify As A Trademark’s Commercial Use Specimen In In re Sones

A decision by the Court of Appeals for the Federal Circuit may make it easier to federally register marks used in connection with goods sold over the Internet. In In re Sones, (2009 U.S. App. LEXIS 28198, 12/23/09), the Federal Circuit vacated and remanded the United States Patent and Trademark Office Trademark Trial and Appeal Board’s final decision denying registration of ONE NATION UNDER GOD for charity bracelets. The Court held that a website page may qualify as an acceptable specimen of use of a mark even if an image of the goods does not appear on the page. The Federal Circuit declined to follow the USPTO’s Trademark Manual of Examination Procedure[1], which includes a section requiring that an electronic display contain an actual image of the product to qualify as a specimen of commercial use of the mark.

Michael Sones filed an intent-to-use application to register ONE NATION UNDER GOD for charity bracelets. The USPTO prosecuted the application, published the mark for opposition, and issued a Notice of Allowance. Six months later, Sones submitted a Statement of Use, supported by a specimen of use, comprising two pages from a website. The first page listed a “ONE NATION UNDER GOD™ charity bracelet” for sale with a “Add to Cart” button underneath. A shaded graphic next to the listing stated that the Photo was not available. The second page displayed a “shopping cart” with an order for “ONE NATION UNDER GOD™ Item #102”. The USPTO rejected the Statement of Use because the submitted specimens did not show a picture of the goods in close proximity to the mark. Sones responded, but did not submit any substitute specimens. The USPTO issued a final Office Action affirming the refusal. Sones appealed.

The TTAB affirmed relying primarily on Lands’ End, Inc. v. Manbeck, a case relating to the use of catalogs as specimens[2]. In Lands’ End, the district court considered the acceptability of an excerpt from a mail order catalog, observing that the specimen included a picture and description of each item. The USPTO incorporated standards taken from the decision into the TMEP. To qualify as an acceptable specimen of use, the catalog needed to include: 1) a picture of the relevant goods, 2) the mark appearing in sufficient proximity to the picture of the goods to associate the mark with the goods, and 3) information necessary to order the goods. 

Sones appealed to the Federal Circuit arguing that the TTAB incorrectly employed an overly narrow standard for acceptable specimens. In its opinion, the Court recounted another TTAB decision applying the catalog standard to a website, where a page bearing the mark and displaying an image of the product, and providing means for ordering the product, was found to qualify as a display associated with the goods suitable for evincing use of the mark[3]. The Court then went on to note several instances of the TTAB applying the same standard, with particular emphasis by the TTAB on the importance of an image of the goods appearing on the Internet evidence. The Federal Circuit ultimately concluded, however, that the TTAB misunderstood the earlier decision regarding catalog specimens. The decision did not impose a picture requirement for catalog evidence to qualify as a specimen of use. The mark had to be used in the catalog in such a way to create an association between the mark and the goods to identify and distinguish the source of the goods, and showing the mark in close proximity to an image of the product was identified as one way to establish the association, but the district court cited other factors relevant to approving the specimen. The Court also found that the bright-line rule employed by the TTAB requiring a picture of the goods had no basis in statutory law or policy. The statute does not identify particular requirements for establishing source significance. Many traditional acceptable specimens like packaging and labels show use in commerce by describing the goods in relation to the mark and do not include pictures of the goods.

Bearing in mind the standards for non-electronic specimens of use, the Federal Circuit rejected the assertion that websites must contain pictures to create an association between the trademark and the goods being sold. The Court cited other sections of the TMEP that acknowledge that a website is, in effect, an electronic store, with ordering from a website being the equivalent of picking up a product in a physical store and carrying the item to the cashier to purchase it. If a box bearing a mark but not displaying an image of the product can qualify as an acceptable specimen of use, so, too, can a website. 

Accordingly, the Court decided for Sones and held that an image of the product is not a prerequisite for acceptance of Internet evidence as a specimen of use for a mark. The Internet evidence simply “must in some way evince that the mark is ‘associated’ with the goods and serves as an indicator of source.” On remand, the Court ordered that the USPTO consider the specimens as a whole to determine if the use of the mark on the web pages sufficiently associates the mark with the bracelets so as to “identify and distinguish the goods.” Factors to consider included whether the website pages has a “point of sale nature,” and whether qualities of the goods are appreciable from the copy on the page. 

Judge Newman dissented from the decision on mootness grounds. On the day the TTAB issued its final refusal, Sones filed another application, with images of the bracelets on the Internet that supported actual use of the mark. Judge Newman stated that the filing of the new application removed the case or controversy requirement. The majority, however, disagreed because the later filing date of the second application provided a later constructive use date. 

This decision may make it easier for Internet retailers without images next to their products to register their trademarks for these products. The retailers may rely on more conveniently accessible Internet evidence instead of collecting and/or taking pictures of labels or packaging.

As an added convenience to our clients, RatnerPrestia conducts Internet searches for suitable specimens of use as Statements of Use and Declarations of Use become due. 

  1. The TMEP is viewable on-line at http://tess2.uspto.gov/tmdb/tmep/.
  2. Lands’ End, Inc. v. Manbeck, 797 F. Supp 511 (E.D. Va. 1992).
  3. In re Dell, 71 USPQ2d 1725 (TTAB 2004).