May, 7th, 2019

By Walter B. Welsh

A webpage qualifies as use in commerce if it is a point-of-sale. A recent precedential decision, In re Siny Corp., provides guidance on what constitutes a point-of-sale. This article discusses that decision and provides practice tips for complying with use requirements.

The Lanham Act provides for registration of a mark based on use of the mark in commerce. A mark is deemed in use in commerce on goods when “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.” The U.S. Patent and Trademark Office (PTO) requires an applicant to submit a specimen of use showing the mark as used on or in connection with the goods. Failure to submit a specimen that qualifies as use in commerce can result in additional costs, loss of priority rights, or abandonment.

Use of a trademark on a webpage qualifies as a “display associated with the goods” if the website is a point-of-sale location for the relevant goods. If the webpage uses the mark and does not constitute a point-of-sale, the webpage constitutes mere advertising and does not qualify as “a display associated with the goods.”

In a recent precedential opinion, the Federal Circuit considered whether a webpage specimen qualified as a display of goods. The Court noted that this was a factual question that must be determined on the evidence in the particular case. The webpage specimen included a display of the mark in association with a picture of the goods (fabric) and included the text “For sales information:” followed by a phone number and email address.”

The Court held that the webpage failed to function as a specimen because the display of a sales phone number and email address, without more detailed sales information, was insufficient to qualify as a point-of-sale. In rejecting the specimen, the Court noted the absence of information it considered essential to a purchasing decision, such as a price or range of prices for the goods, the minimum quantities one may order, accepted methods of payment, or how the goods would be shipped. The Court reasoned that if virtually all important aspects of the transaction must be determined from information extraneous to the webpage, then the webpage is not a point-of-sale.

Practice Points

  • A proper trademark specimen is a prerequisite to trademark registration. Prior to submitting the specimen, the applicant should confer with an attorney to ensure that the specimen qualifies as a “use in commerce.” Failure to submit a proper specimen can result in abandonment of the application.
  • The applicant should have two or more types of specimens, such as webpage usage, product packaging, and directly marked goods. Should it become necessary to traverse a PTO rejection of the first specimen, the Applicant can submit an alternate specimen.
  • If the applicant is using a webpage specimen, it should review the webpage prior to submission to confirm it qualifies as a point-of-sale. Providing an email address or telephone number on the page can qualify as a point-of-sale provided there is sufficient important sales aspects such as price, quantity, and shipping information provided on the webpage.  Webpages are easy to edit and can be updated prior to submission of a statement of use to include the necessary information to qualify as a display associated with the goods.
  • The decision of whether a webpage qualifies as a point-of-sale is factual. If an applicant attempts to traverse a webpage specimen rejection, it should submit evidence (as opposed to attorney argument) of how sales are actually made—e.g., documentation or verified statements from knowledgeable personnel as to what happens and how.

 

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