Are Your Goods Properly Showing Use of a Trademark?
Do you think contact information is enough to show use of a trademark with the goods? Think again…
In re Siny Corp. (Fed. Cir. 2019)
An Applicant filed an application seeking to register the mark CASALANA for its “knit pile fabric made with wool” based on use in commerce. The Applicant submitted a webpage printout to show the mark being used in commerce. The webpage printout showed an image of the fabric with the caption "Casalana.”
The webpage printout also included the text, "For sales information," followed by a phone number and email address.
The TTAB affirmed the examiner's refusal to register the mark and noted that the webpage specimen neither showed the mark "placed… on the goods or their containers or the displays associated therewith… ." On appeal, the Federal Circuit affirmed the TTAB's decision that, “[i]n 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.” The Federal Circuit took notice of the fact that the Webpage Specimen lacked “information 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 held that the additional text and contact information was not enough to "cross the line from mere advertising to an acceptable display associated with the goods" because "virtually all important aspects of the transaction must be determined from information extraneous to the web page." The Federal Circuit first issued a non-precedential opinion in January 2019 but reissued the opinion as a precedential opinion on April 10, 2019.
This decision serves as a caution for all goods trademark applications. The USPTO requires an Applicant to submit a specimen of use showing the applied-for mark as used on or in connection with the goods. However, in determining whether a specimen qualifies as a “display associated with the goods,” an important factor in the analysis is whether the mark is used at a point of sale location. Therefore, for marks associated with goods displayed on a web page, it is important for the specimen to show that the goods are made available for purchase through the webpage or that the web page includes information essential to a purchasing decision.
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