CALL US: 206.533.3854
CALL US  206.533.3854
Full color aeon logo
CC BY 2.0, https://commons.wikimedia.org/w/index.php?curid=681695

A Website Printout May Be Used as a Trademark Specimen

Federal Circuit:
Webpage isn’t specimen
If people can’t buy

The Federal Circuit has ruled that a website printout isn’t an acceptable specimen showing  that a trademark has been used in connection with goods when consumers can’t place orders directly from the page.

The case of IN RE: SINY CORP. involved the attempted registration of the mark CASALANA for “Knit pile fabric made with wool for use as a textile in the manufacture of outerwear, gloves, apparel, and accessories.”

Siny, seeking the mark, submitted a specimen consisting of a webpage printout, purporting to show the mark in use in commerce for the goods.

The examining attorney at the Trademark Office initially refused registration because the webpage “appear[ed] to be mere advertising material” and thus failed to show the requisite use in commerce for the goods.

The initial page submitted didn’t include a means for ordering the goods. Siny later submitted a page with additional text, stating that buyers could contact the company via phone or email “for sales information.”

The examining attorney still found that insufficient, because consumers couldn’t actually make purchases via the website:

The examining attorney noted the absence of what he considered necessary ordering information, such as minimum quantities, cost, payment options, or shipping information. He therefore maintained the refusal based on the submitted specimen’s failure to show the requisite use in commerce for the goods.

Siny appealed.

The Federal Circuit noted:

The Lanham Act provides for registration of a mark based on use of the mark in commerce. 15 U.S.C. § 1051(a). A mark is deemed in use in commerce on goods when, among other things, “it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto.”

Mere advertising isn’t enough to qualify as a “display.”

The court also noted that

In determining whether a specimen qualifies as a display associated with the goods, one important consideration is whether the display is at a point-of-sale location.

However,

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.

Thus, the court agreed that the webpage printout wasn’t an acceptable specimen.

The takeaway here is that in order for a webpage to qualify as a specimen, buyers need to be able to place orders via the page.

Related Articles

Federal Circuit Allows “Trump Too Small” Trademark

Federal Circuit:
First Amendment allows the
“Trump Too Small” trademark

Read More

When is trademark generic?

Generic trademarks:
Won’t be granted to start with,
And can be cancelled

Read More

AEON Law Founder Named Crypto “Trailblazer” by the National Law Journal

Adam Philipp, the founder of AEON Law, has been recognized among the leading practitioners of blockchain, cryptocurrency, and fintech law by the National Law Journal.

Read More

Stay Informed

Sign up to receive Patent Poetry—a monthly roundup of key IP issues in our signature haiku format. Four articles (only 68 syllables); zero hassle.

SERVICES

PROTECT

International IP Protection

DEAL

DEFEND

Opinions