by Judith Grubner of Arnstein & Lehr’s Intellectual Property Practice Group

The U.S. Court of Appeals for the Federal Circuit just made it easier to submit a specimen of use from a Web page to register a trademark for goods because it has rejected the Trademark Office’s requirement that an electronic specimen must contain a picture of the goods.

To obtain most federal trademark registrations, the mark must be used in commerce on or in connection with the goods.  The Lanham Act defines “use in commerce” as “the bona fide use of the mark in the ordinary course of trade.”  15 U.S.C. § 1127.  For goods, the mark must be “placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto.”  In contrast, an acceptable specimen of use for services is use or display of the mark “in the sale or advertising of services.”

Prior to 1992, the Trademark Office did not accept a catalog page as a specimen of use for goods, finding that catalogs were advertising materials.  However, after a U.S. District Court characterized a catalog page as a point-of-sale display associated with the goods, the Trademark Office created new categories of acceptable specimens for catalogs and for electronic displays.  Lands’ End, Inc. v. Manbeck, 797 F. Supp. 511 (E.D.Va. 1992); TMEP §§ 904.03(h) and (i).  Under the Trademark Office rules, an acceptable catalog page specimen must include (1) a picture of the relevant goods, (2) the mark placed sufficiently near the picture of the goods to associate the mark with the goods and (3) information necessary to order the goods.

This three-part test has been applied to electronic specimens such as Web site pages.  It has been rigidly applied to reject specimens that do not contain all three of the elements.  In the recent case In re Sones, No. 2009-1140 (Fed. Cir. 12/23/09), the Trademark Office rejected the applicant’s specimen of use of the mark “ONE NATION UNDER GOD” for a charity bracelet because the two Web site pages he submitted did not contain a picture of the goods in close proximity to the description.  The Web pages displayed “shopping cart” functionality for online ordering but the shaded square next to the product listing stated that a photo of the product was not then available.  He could not submit the required photograph later because it did not exist when the Statement of Use was filed.

The Federal Circuit rejected a “bright-line rule” requiring a photograph with every Internet marketing specimen for goods.  It is not necessary to show the goods as well as describe them, the Court concluded, if the mark is shown in use “at a point of sale location” and is “a means of identifying and distinguishing the source of goods.”  The Lanham Act simply requires the mark to be associated with the goods.  Just as there is no requirement that a product package contain a picture of the goods, there is no such requirement for a Web site display.  The Web page is an “electronic shelf-talker or banner” that encourages the customer to buy the product.  A customer using a Web link to buy the goods is the equivalent of a consumer seeing a shelf-talker and taking the item to a cashier in a store.  A Web page must only in some way show that the mark is associated with the goods and serves as a source indicator.  The Court concluded that a picture is not the only way to make that association.  If the Web page has a “point of sale nature” and the features or characteristics of the goods are recognizable from the text, the specimen could be acceptable.  The more standard the product, the less description would be required.

Although a picture is no longer a mandatory requirement for a Web site specimen, we believe that it is still good practice to provide one, if possible, to avoid having to convince a trademark examiner that the mark in the specimen is a sufficient indicator of the source of the goods.  It should no longer be necessary to provide a photograph, however, a drawing should suffice if it is detailed enough to identify the product.  It is possible that the Trademark Office will become stricter about the “ordering information” requirement in light of this case.  Although “shopping cart” functionality has not been required in the past if enough information is provided to order the goods some other way, the examiners may start to require online ordering capability with Web site specimens, particularly if there is no picture of the goods.  Nevertheless, this case should make it easier to register a trademark for goods sold on Web sites and to file declarations of use and renewal applications to maintain registrations.