Federal Circuit Liberalizes Specimen Requirements for Online Retailers

11 January 2010 Publication
Author(s): Andrew Baum Jeffrey H. Greene

Legal News Alert: Trademark, Copyright & Advertising

A recent decision by the Court of Appeals for the Federal Circuit makes it easier to register marks for goods that are sold over the Internet. The decision, In re Sones, (2009 U.S. App. LEXIS 28198, 12/23/09), holds that a Web page may be an acceptable specimen even if the goods are not pictured on that page. In so holding, the Federal Circuit refused to follow a provision of the Trademark Manual of Examining Procedure (TMEP), which had required that a Web page submitted as a “display associated with the goods” include a picture of the goods themselves.

In Sones, the applicant applied to register ONE NATION UNDER GOD for charity bracelets and submitted, as a specimen, two pages from a Web site. One page offered the charity bracelet as an item that could be ordered, inviting the user to “Add to Cart”; the other page was a “Your Shopping Cart” page showing an order for the goods bearing the mark. The USPTO rejected the Statement of Use because the specimen did not show “a picture of the goods in close proximity to the mark.” The applicant appealed, and the Trademark Trial and Appeal Board (TTAB) affirmed. It relied primarily on TMEP Section 904.06(a), (now 904.03(h)), which purported to set forth a three-part test for “catalogs as specimens” taken from Land’s End, Inc. v. Manbeck, 797 F. Supp. 511 (E.D. Va. 1992):

“In accordance with this decision, examining attorneys should accept any catalog or similar specimen as a display associated with the goods, provided that (1) it includes a picture of the relevant goods, (2) it includes the mark sufficiently near the picture of the goods to associate the mark with the goods, and (3) it includes information necessary to order the goods. Any form of advertising which satisfies these criteria should be construed as a display associated with the goods.”

The applicant appealed to the Federal Circuit. In its opinion, the Court recounted the ways in which Section 904.06(a) had been applied to electronic specimens. Most notably, in In re Dell, 71 USPQ 2d 1725, 1727 (TTAB 2004), the TTAB held 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.” The Federal Circuit concluded, however, that the TMEP rule was based upon a misapprehension of Land’s End. First, that decision never expressly required that a picture of the goods appear on the catalog page; all that was required was that the customer have “the opportunity to look to the displayed mark as a means of identifying and distinguishing the source of the goods.” Second, the “bright line rule” requiring a picture of the goods has no basis in statutory law or policy. Many types of specimens — including labels, menus, packaging, and traditional retail point of sale displays — do not include pictures of the goods.

In deciding for the applicant, the Court cited other provisions of the TMEP that recognize the realities of Web-based commerce. “A consumer using the link on a 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.” TMEP Section 904.03(i). Since this is the case, and neither the boxes nor the shelf-talkers need photographs to link a trademark inside, then neither should Web sites. All that is required is that the specimen “must in some way evince that the mark is ‘associated’ with the goods and serves as an indicator of source.”

While many Internet retailers use pictures of goods on their Web pages, some do not. This decision will make it easier for them to register their marks by using readily-accessible Web pages rather than labels, boxes, or photographs of the goods. The Federal Circuit’s flexible and realistic standard will be helpful to e-commerce companies as the forms of display and means for selling goods continue to evolve.

Legal News Alert is part of our ongoing commitment to providing up-to-the-minute information about pressing concerns or industry issues affecting our clients and our colleagues. If you have any questions about this update or would like to discuss this topic further, please contact your Foley attorney or the following:

Andrew Baum
New York, New York