During examination, an examining attorney also has the discretion to request additional materials, under 37 C.F.R. §2.61(b), if necessary for proper examination of the mark. TMEP §814. For example, if the mark is a configuration of the goods or of the container for the goods, the examining attorney may require additional reproductions showing the actual product or container. Similarly, the examining attorney might require a complete copy of a publication in order to determine whether a mark is merely descriptive of the goods. See TMEP §904.02(c)(iii) regarding marks used on publications.
If color is a feature of the mark, or if the mark consists solely of color, the specimen must show use of the color. 37 C.F.R. §2.51; TMEP §807.12. In such case, the applicant should submit color photographs of the specimen or other similar reproductions of the specimen in color so that the color is identifiable.
For all applications filed on or after November 2, 2003. If an applicant submits a color drawing, or a description of the mark that indicates the use of color on the mark, the applicant must claim color as a feature of the mark. 37 C.F.R. §2.52(b)(1); TMEP §807.07(a)(i).
If color is a feature of the mark and the applicant submits a specimen that is not in color or not in the appropriate color, the examining attorney will require the applicant to file a substitute specimen that shows use of the appropriate color(s). See TMEP §904.05 regarding substitute specimens.
See also TMEP §1202.05(f) regarding specimens showing use of marks that consist solely of color.
An application for registration of a mark for publications is treated the same as any other application with respect to specimen requirements. The USPTO does not require a complete copy of the publication or a title page in every case. However, the examining attorney may require a copy of the publication under 37 C.F.R. §2.61(b) if he or she believes it is necessary for proper examination. For example, a copy of the publication might be necessary to determine whether a mark is merely descriptive of the goods.
(b)(1) A trademark specimen must show use of the mark on the goods, on containers or packaging for the goods, on labels or tags affixed to the goods, or on a display associated with the goods. To constitute a display associated with the goods, a specimen must show use of the mark directly associated with the goods and such use must be of a point-of-sale nature. The Office may accept another document related to the goods or the sale of the goods when it is impracticable to place the mark on the goods, packaging for the goods, or displays associated with the goods.
* * *
(c) A clear and legible photocopy, photograph, web page printout, or other similar type of reproduction of an actual specimen that meets the requirements of paragraphs (a) and (b) of this section is acceptable. The reproduction must show the entire specimen or enough of the specimen that the nature of the specimen, the mark, and the good or service with which the mark is used are identifiable. A web page must include the URL and access or print date. An artist's rendering, a printer's proof, a computer illustration, digital image, or similar mockup of how the mark may be displayed, or a photocopy of the drawing required by § 2.51, are not proper specimens.
For a trademark application under §1(a), allegation of use in an application under §1(b), or affidavit of use under §8 or §71 of the Trademark Act, the specimen must show actual use of the mark on the goods, on containers or packaging for the goods, on labels or tags affixed to the goods, or on a display associated with the goods. 37 C.F.R. §2.56(b)(1). See TMEP §904.03(a) regarding labels and tags specimens, §904.03(b) regarding stampings on goods as specimens, and §904.03(c) regarding commercial packaging specimens. See also TMEP §904.03(e) regarding specimens for computer programs, movies, videos, or audio recordings and §904.03(j) regarding manuals as specimens.
To constitute a "display associated with the goods," the specimen must show (1) use of the mark directly associated with the goods and (2) such use must be of a point-of-sale nature. 37 C.F.R. §2.56(b)(1). See TMEP §904.03(g)–(i) for more information regarding specimens that are displays associated with the goods.
When it is impracticable to place the mark on the goods, packaging for the goods, or displays, the USPTO may accept another document related to the goods or the sale of the goods as a specimen. 37 C.F.R. §2.56(b)(1). See TMEP §904.03(k) for more information regarding procedures for such specimens.
A clear and legible photocopy, photograph, web page (including the URL and access or print date), or other similar type of reproduction of a specimen showing the mark as actually used on or in connection with the goods is acceptable. 37 C.F.R. §2.56(c).
URL and Date Accessed/Printed Required for Web Pages. Due to the transitory nature of Internet postings, the URL for the web page of the specimen and the date the page was accessed or printed must both be provided to enable verification. 37 C.F.R. §2.56(c). Trademark owners can submit the URL and date directly on the specimen web page itself, appearing anywhere on the page within the TEAS form that submits the specimen, or in a verified statement under 37 C.F.R §2.20 or 28 U.S.C. §1746 in a later-filed response. This information may not be entered via examiner’s amendment. If the web page includes a photograph of the applied-for mark appearing on the goods or on packaging for the goods that would otherwise be acceptable as a specimen of use for goods, it need not include the URL and access or print date.
Specimens in applications and post-registration filings submitted prior to February 15, 2020 are "grandfathered" under the prior rules, until the application registers or is abandoned and cannot be revived or reinstated pursuant to 37 C.F.R §§2.64, 2.66, or 2.146, or until the acceptance or final rejection of the post-registration filing. Specimens and substitute specimens submitted on or after February 15, 2020, including those submitted in connection with applications and post-registration filings that were filed prior to February 15, 2020, are not grandfathered and must comply with the current specimen rules.
See TMEP §904.03(f) regarding specimens for sound marks, §904.03(l) regarding specimens for motion marks, and §904.03(m) regarding specimens for scent and flavor marks.
See TMEP §904.04 regarding material not appropriate as specimens for trademarks.
See TMEP §§1301.04–1301.04(j) regarding service mark specimens, §1303.01(a)(i)(C) regarding collective trademark and collective service mark specimens, §1304.02(a)(i)(C) regarding collective membership mark specimens, and §1306.02(a)(i)(B) regarding certification mark specimens.
In most cases, if a trademark is ordinarily applied to the goods or the containers for the goods by means of labels, a label affixed to the goods is an acceptable specimen. However, if a mark is merely informational or incapable of functioning as a mark for some other reason, it would not be seen as an indicator of source, and registration must be refused even if the specimen of record shows what would otherwise be acceptable trademark use, including use on tags or labels affixed to the goods. See TMEP §§1202.04–1202.04(d).
Shipping or mailing labels may be accepted if they are affixed to the goods or to the containers for the goods and if proper trademark usage is shown. In re A.S. Beck Shoe Corp., 161 USPQ 168 (TTAB 1969); Elec. Commc’ns, Inc. v. Elec. Components for Indus. Co., 443 F.2d 487, 170 USPQ 118 (8th Cir. 1971). They are not acceptable if the mark as shown is merely used as a trade name and not as a trademark. An example of such unacceptable usage is use of the term solely as a return address. In re Supply Guys, Inc., 86 USPQ2d 1488 (TTAB 2008); Bookbinder’s Sea Food House, Inc. v. Bookbinder’s Rest., Inc., 118 USPQ 318 (Comm’r Pats. 1958); I. & B. Cohen Bomzon & Co. v. Biltmore Indus., Inc., 22 USPQ 257 (Comm’r Pats. 1934). See TMEP §1202.01 regarding trade name refusals.
Although a photograph of the goods bearing the mark on a label or tag attached to the goods is preferred, a label or tag that is not shown physically attached to the goods may be accepted if, in addition to the mark, it includes information that typically appears on a label or tag in use in commerce for the types of goods, such as net weight, volume, UPC bar codes, lists of contents or ingredients, or other information that is not part of the mark but provides information sufficient to identify the goods.
Labels or tags that appear to be a mockup, illustration, or other rendering are unacceptable and will result in refusal for failure to show the mark in actual use in commerce in connection with the goods. The refusal will be under Sections 1 and 45 (15 U.S.C. §§1051, 1127 ) if submitted before registration, or under Sections 8 or 71 and 45 of the Act (15 U.S.C. §§1058, 1127, 1141k ) if submitted after registration. In addition to the refusal, during the application process the examining attorney must also issue an inquiry under 37 C.F.R. §2.61(b) to clarify the use of the specimen in commerce. TMEP §904.03(a). For example, an inquiry may be appropriate if there is uncertainty as to whether a label is actually placed on the goods as they are sold in commerce or if it includes information atypical of labels for the listed goods. However, nothing prohibits the registration of a mark in an application that contains only "temporary" specimens, provided that the specimens were actually used in commerce. See In re Chica, 84 USPQ2d 1845,1847-48 (TTAB 2007) (finding applicant’s specimen unacceptable not because it was temporary but because it comprised a mere drawing of the goods with an illustration of how the mark may be displayed and not an actual specimen that applicant used in commerce).
See TMEP §904.04(a) regarding digitally created or altered specimens and §904.07(a) regarding "use-in-commerce" issues that may be raised on initial review of specimens.
Stamping a trademark on the goods, on the container, or on tags or labels attached to the goods or containers, is a proper method of trademark affixation. See In re Crucible Steel Co. of Am., 150 USPQ 757 (TTAB 1966). The trademark may be imprinted in the body of the goods, as with metal stamping; it may be applied by a rubber stamp; or it may be inked on by using a stencil or template.
When a trademark is used in this manner, clear and legible photographs, web page printouts, or other similar type of reproductions showing the actual stamping or stenciling are acceptable as specimens. If provided as a web page printout, the web page must include the URL and date accessed or printed. 37 C.F.R. §2.56(c).
The terminology "applied to the containers for the goods" means applied to any type of commercial packaging that is normal for the particular goods as they move in trade. Thus, a showing of the trademark on the normal commercial package for the particular goods is an acceptable specimen. In re Brown Jordan Co., 219 USPQ 375 (TTAB 1983) (holding that stamping the mark after purchase of the goods, on a tag attached to the goods that are later transported in commerce, is sufficient use). For example, gasoline pumps are normal containers or "packaging" for gasoline.
A specimen showing use of the trademark on a vehicle in which the goods are marketed to the relevant purchasers may constitute use of the mark on a container for the goods, if this is the normal mode of use of a mark for the particular goods. In re E.A. Miller & Sons Packing Co., 225 USPQ 592 (TTAB 1985). But see In re Lyndale Farm, 186 F.2d 723, 88 USPQ 377 (C.C.P.A. 1951).
If submission on paper is permitted (see TMEP §301.01), the USPTO will accept specimens saved on conventional portable digital media carriers such as flash drives, compact discs (CDs), and digital video discs (DVDs).
Flash drives, compact discs, and DVDs must contain files in a file format designated as acceptable by the USPTO, such as .jpg, .pdf, .wav, .wmv, .wma, .mp3, .mpg, or .avi format. Cf. 37 C.F.R. §2.56(c).
Each digital media carrier should only contain specimens for one application; however, in a multiple-class application, the applicant may include more than one specimen on the same digital media carrier. If the nature of the specimen is unclear, the applicant should explain what it is and how it is used.
See TMEP §904.02(a) regarding electronically filed specimens, §904.03(f) regarding specimens for sound marks, and §904.03(l) regarding specimens for motion marks. See also 37 C.F.R. §2.56(d) and TMEP §904.02(b) regarding submission of permitted paper-filed specimens.
The computer program, video, and movie industries have adopted the practice of applying trademarks that are visible when the goods, that is, downloadable or recorded computer programs or movies, are displayed on a screen (e.g., on the first several frames of a movie).
An acceptable specimen might be a photograph or screen shot of a computer display screen projecting the identifying trademark for a downloadable or recorded computer program, or a photograph of a frame(s) of a movie or video bearing the mark. It is not necessary that purchasers see the mark prior to purchasing the goods, as long as the mark is applied to the goods or their containers, or to a display associated with the goods, and the goods are sold or transported in commerce. In re Brown Jordan Co., 219 USPQ 375 (TTAB 1983) (holding that stamping the mark after purchase of the goods, on a tag attached to the goods that are later transported in commerce, is sufficient use).
For downloadable computer software, an applicant may submit a specimen that shows use of the mark on an Internet website. Such a specimen is acceptable only if it creates an association between the mark and software and provides sufficient information to enable the user to download or purchase the software from the website. See In re Azteca Sys., Inc., 102 USPQ2d 1955 (TTAB 2012) . If the website simply advertises the software without providing a way to download, purchase, or order it, the specimen is unacceptable. See In re Dell Inc., 71 USPQ2d 1725, 1727 (TTAB 2004) ; see also In re Osterberg, 83 USPQ2d 1220, 1224 (TTAB 2007) . See TMEP §904.03(i) regarding electronic displays as specimens for trademarks.
Similarly, a specimen for audio recordings in Class 9 that shows use of the mark on an internet website must include a "download" or similar link to put the consumer on notice that the identified goods are available for download. Absent such a link or the equivalent thereof, the specimen on its face fails to show use of the mark in commerce for the goods. In re Rogowski, 104 USPQ2d 2012, 2014-15 (TTAB 2012) .
Specimens for downloadable or recorded software may also indicate that the software is a "beta" version. This term is commonly used in the software field to identify a preliminary version of a product. Although some beta products may not be made available to consumers, others are. Thus, the appearance of this term on a specimen for downloadable or recorded software does not, by itself, necessarily mean that the relevant goods are not in actual use in commerce or that the specimen is unacceptable. However, if examination of the specimen indicates that the beta version is not in actual use in commerce, the examining attorney must refuse registration under §1 and §45 of the Trademark Act because the applicant has not provided evidence of use of the applied-for mark in commerce. 15 U.S.C. §§1051, 1127. See TMEP §1301.03(a) regarding service mark specimens containing the term "beta."
Specimens comprising a web page must include the URL and date accessed or printed. 37 C.F.R. §2.56(c). If the URL and/or date information is submitted in a later-filed response, it must be verified. See id.
To show that a sound mark actually identifies and distinguishes the goods/services/collective membership organization and indicates their source, an applicant must submit a specimen that contains a sufficient portion of the audio or video content to show how the mark is used on or in connection with the goods/services/collective membership organization.
For TEAS applications under §1(a), as well as response, statement of use/amendment to allege use, petition, and registration maintenance/renewal forms, the specimen must be attached to the TEAS form and be an electronic file in a file format designated as acceptable by the USPTO, such as .wav, .wmv, .wma, .mp3, .mpg, or .avi format. See 37 C.F.R. §2.56(c). Audio files should not exceed 5 MB in size, and video files should not exceed 30 MB, because TEAS cannot accommodate larger files.
See TMEP §904.02(a) regarding specimens filed electronically and §904.03(d) regarding electronic and digital media specimens for permitted paper filings. See also TMEP §807.09 and §1202.15 regarding sound marks.
A specimen comprising a display associated with the goods (1) must show use of the mark directly associated with the goods and (2) such use must be of a point-of-sale nature. 37 C.F.R. §2.56(b)(1). It must bear the trademark prominently; however, it is not necessary that the display be in close proximity to the goods. See In re Marriott Corp., 459 F.2d 525, 173 USPQ 799 (C.C.P.A. 1972); Lands’ End Inc. v. Manbeck, 797 F. Supp. 511, 24 USPQ2d 1314 (E.D. Va. 1992).
Displays associated with the goods comprise point-of-sale material, such as banners, shelf-talkers, window displays, menus, and similar devices that show use of the mark directly associated with the goods.
These items must be designed to catch the attention of purchasers and prospective purchasers as an inducement to make a sale. See In re Kohr Bros., Inc., 121 USPQ2d 1793, 1796 (TTAB 2017) (finding that an envelope-sized sign placed on a wall next to a business license and health department certificate would not catch the attention of consumers or be regarded as a trademark for applicant’s goods). That is, the display must prominently display the mark in question and associate it with, or relate it to, the goods. See id. at 1795; In re Osterberg, 83 USPQ2d 1220 (TTAB 2007) ; In re Morganroth, 208 USPQ 284 (TTAB 1980) (purported mark was so obfuscated on the specimen that it was not likely to make any impression on the reader). The display must be related to the sale of the goods such that an association of the two is inevitable. See In re Bright of Am., Inc., 205 USPQ 63 (TTAB 1979) ; see also In re ITT Rayonier Inc., 208 USPQ 86 (TTAB 1980) ; cf. In re Shipley Co., 230 USPQ 691 (TTAB 1986); In re Jones,216 USPQ 328 (TTAB 1982).
Folders, brochures, or other materials that describe goods and their characteristics or serve as advertising literature are not per se "displays." In re Schiapparelli Searle, 26 USPQ2d 1520 (TTAB 1993) ; In re Drilco Indus. Inc., 15 USPQ2d 1671 (TTAB 1990). In order to rely on such materials as specimens, an applicant must submit evidence of point-of-sale presentation. Such evidence must consist of more than an applicant's statement that copies of the material were distributed at sales presentations or tradeshows. A mere statement that advertising and promotional materials are used in connection with sales presentations is not sufficient, in and of itself, to transform advertising and promotional materials into displays used in association with the goods. In re Osterberg, 83 USPQ2d 1220, 1224 ("Applicant's declaration lacks sufficient detail to transform the web page from advertising into a display used in association with the goods. For example, there is no discussion regarding how the applicant used the web page at sales presentations to make an association between the mark and the products or whether consumers, in fact, associated the mark with the products. The use of advertising material in connection with the sales of a product does not ipso facto make it a display used in association with the goods sufficient to support technical trademark use for registration."); see also In re Anpath Grp., Inc., 95 USPQ2d 1377 (TTAB 2010) (holding that a pamphlet and flyer listing the URL of applicant’s website and/or a telephone number for contacting sales representatives does not create the same point-of-sale situation as a detailed product catalogue, a detailed web page, or a situation where there is the option of placing an order based upon detailed information from the specimen); In re Ancha Elecs. Inc., 1 USPQ2d 1318 (TTAB 1986) (holding that a photograph showing an informational flyer or leaflet clearly depicting the mark and presented on the goods at a trade show exhibit was an acceptable display associated with the goods); In re Columbia Chase Corp., 215 USPQ 478 (TTAB 1982) (holding that folders and brochures describing goods and their characteristics or serving as advertising literature are not displays, and the appearance of marks and product photographs in such literature does not per se amount to use of a mark on displays without evidence of point-of-sale presentation).
An infomercial was held to be a point-of-sale display associated with the goods, where the goods were shown either immediately before or immediately after the trademark was displayed, and the information on how to order the goods was given within a reasonable time after the goods were shown. In re Hydron Techs., Inc., 51 USPQ2d 1531, 1534 (TTAB 1999) . The Board found that the infomercial created an association between the trademark and the goods, and the test for constituting a display associated with the goods was, therefore, satisfied. Id.
Displays associated with the goods also exist in an electronic or online environment in the form of web pages. These "electronic displays" perform the same function as traditional displays and must meet the same standards for an acceptable specimen as traditional displays. See In re Sones, 590 F.3d 1282, 1288, 93 USPQ2d 1118, 1123 (Fed. Cir. 2009); In re Dell Inc., 71 USPQ2d 1725, 1727 (TTAB 2004) . See TMEP §904.03(i) regarding electronic displays.
In appropriate cases, catalogs are acceptable as a display associated with the goods (see TMEP §904.03(g)). See Lands’ End Inc. v. Manbeck, 797 F. Supp. 511, 24 USPQ2d 1314 (E.D. Va. 1992). In that case, the applicant had applied to register "KETCH" for purses. The specimen was a catalog page that included a picture of the goods and, below the picture, the mark and a description of the goods. The Court stated that "[t]he alleged trademark ‘KETCH’ appears prominently in large bold lettering on the display of purses in the Lands’ End specimen in a manner which closely associates the term with the purses." 24 USPQ2d at 1315.
The Court determined that the catalog was not mere advertising and that it met the relevant criteria for displays associated with the goods. The Court evaluated the catalog specimen as follows:
A customer can identify a listing and make a decision to purchase by filling out the sales form and sending it in or by calling in a purchase by phone. A customer can easily associate the product with the word "KETCH" in the display . . . . The point of sale nature of this display, when combined with the prominent display of the alleged mark with the product, leads this court to conclude that this mark constitutes a display associated with the goods.
24 USPQ2d at 1316.
Accordingly, examining attorneys may accept any catalog or similar specimen as a display associated with the goods, provided that it: (1) includes a picture or a sufficient textual description of the relevant goods; (2) shows the mark in association with the goods; and (3) includes the information necessary to order the goods (e.g., an order form or a phone number, mailing address, or email address for placing orders). See 37 C.F.R. §2.56(b)(1).
However, the inclusion of a phone number, Internet address, and/or mailing address merely as part of corporate contact information on an advertisement describing the product is not in itself sufficient to meet the criteria for a display associated with the goods. There must be an offer to accept orders or instructions on how to place an order. See In re MediaShare Corp., 43 USPQ2d 1304,1306 (TTAB 1997) (finding applicant’s fact sheet brochure, which included an address and phone number but omitted any information as to product price and how to order applicant's software, was merely advertising material). It is not necessary that the specimen list the price of the goods.
A web page that displays a product can constitute a "display associated with the goods" (see TMEP §904.03(g)) if it:
See In re Sones, 590 F.3d 1282, 1288, 93 USPQ2d 1118, 1123 (Fed Cir. 2009); In re Azteca Sys., Inc., 102 USPQ2d 1955, 1957-58 (TTAB 2012) ; In re Dell Inc., 71 USPQ2d 1725, 1727 (TTAB 2004) ; Lands’ End, Inc. v. Manbeck, 797 F. Supp. 511, 514, 24 USPQ2d 1314, 1316 (E.D. Va. 1992). See TMEP §904.03(g) for more information regarding displays associated with goods.
The mark must also be displayed on the web page in a manner in which customers will recognize it as a mark. See In re Morganroth, 208 USPQ 284, 287-88 (TTAB 1980) ; see also In re Osterberg, 83 USPQ2d 1220, 1223 (TTAB 2007) (finding that CONDOMTOY CONDOM was not displayed so prominently on web page specimen that consumers would recognize it as a trademark for condoms). See TMEP §1202.04 regarding matter that is merely informational in nature.
Generally, a web page will display the trademark in direct association with a picture or photograph of the goods. However, in Sones, the Federal Circuit held that although a visual depiction of the goods "is an important consideration in determining whether a submitted specimen sufficiently associates a mark with the source of the goods," a picture of the goods on the web page is not mandatory. In re Sones, 590 F.3d at 1288, 93 USPQ2d at 1123. A textual description may suffice where "the actual features or inherent characteristics of the goods are recognizable from the textual description, given that the more standard the product is, the less comprehensive the textual description need be." Id. at 1289, 93 USPQ2d at 1124.
An applicant need not describe a web-page specimen as a "display" for it to qualify as an acceptable display associated with the goods, nor must the web page come from an applicant’s own website. A web page from a third-party website may also be acceptable as a display if it meets the requirements discussed above. See In re Osterberg, 83 USPQ2d at 1221, 1223-24 (finding the specimen unacceptable not because it was a web page from a third-party website, but because it neither showed the mark in association with the goods nor provided a means for ordering the goods). For instance, a manufacturer of bed linens may rely on a third-party retail vendor’s web page when the web page shows a picture of the bed linens in direct association with the mark and provides point-of-sale means for ordering them, as shown in Example 1.
URL and Date Accessed/Printed Required for Web Pages. Due to the transitory nature of Internet postings, the URL for the web page of the specimen and the date the page was accessed or printed must both be provided to enable verification. 37 C.F.R. §2.56(c). Trademark owners can submit the URL and date directly on the specimen web page itself, appearing anywhere on the page within the TEAS form that submits the specimen, or in a verified statement under 37 C.F.R. §2.20 or 28 U.S.C. §1746 in a later-filed response. This information may not be entered via examiner’s amendment. If the web page includes a photograph of the applied-for mark appearing on the goods or on packaging for the goods that would otherwise be acceptable as a specimen of use for goods, it need not include the URL and access or print date.
The following examples in this section and the sections below would only be accepted by the USPTO if they included the required URL and date accessed or printed. See 37 C.F.R. §2.56(c).
Example 1: Mark is directly associated with the goods, goods are pictured and described, and point-of-sale ordering information is provided.
Mark: LACOSTE
Goods: Coverlets, duvet covers, duvets, bed blankets, bed linen, bed sheets, pillow cases, bath linen, washing mitts
Similarly, a web page from a third-party, social-media website may also be accepted provided the web page satisfies the elements of a display associated with the goods.
However, while a web page display associated with the goods is an acceptable specimen for goods, mere advertising material is not. In re MN Apparel LLC, 2021 USPQ2d 535, at *15 (TTAB 2021) (citing In re Siny Corp., 920 F.3d 1331, 1336, 2019 USPQ2d 127099, at *2-3 (Fed. Cir. 2019)); In re Anpath Grp., 95 USPQ2d 1377, 1380 (TTAB 2010) ; In re Quantum Foods, Inc., 94 USPQ2d 1375, 1379 (TTAB 2010); see TMEP §904.04(b). Acceptable web-page displays are not merely advertising, but instead serve as point-of-sale displays because the website on which the web page appears is, in effect, an electronic retail store, and the web page is a shelf-talker or banner which encourages the consumer to buy the product and provides the information necessary to do so. A consumer using the link on the 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. See In re Dell Inc., 71 USPQ2d at 1727. The web page is, thus, a display associated with the good, which in part has a point-of-sale nature. See In re Siny Corp., 920 F.3d 1331, 1336, 2019 USPQ2d 127099 (Fed. Cir. 2019).
A display with a point-of-sale nature is "calculated to consummate a sale;" that is, it must contain sufficient practical information about the goods to provide the potential purchaser with the information normally associated with ordering goods of that kind and a way to order the goods, so as to put the prospective customer at the point of purchase and allow them to directly purchase the goods. In re MN Apparel LLC, 2021 USPQ2d 535, at *16; In re Anpath Grp., 95 USPQ2d at 1382; In re Quantum Foods, Inc., 94 USPQ2d at 1379 (quoting In re Bright of Am., Inc., 205 USPQ 63, 71 (TTAB 1979) ); An advertisement, however, merely describes or touts the benefits of the goods, influences people to buy them, or informs the public about the goods and the company that provides them. In re Anpath Grp., 95 USPQ2d at 1381-82; In re Quantum Foods, Inc., 94 USPQ2d at 1379. It does not offer a way to directly purchase the goods, because it either does not contain an offer to accept orders for the goods or does not provide special instructions for placing orders for the goods. In re Quantum Foods, Inc., 94 USPQ2d at 1380; In re Osterberg, 83 USPQ2d at 1224.
Therefore, a web page that merely provides information about the goods, but does not have a point-of-sale nature such that it does not provide a means of ordering the goods, is viewed only as promotional material, which is not acceptable to show trademark use on goods. See In re Siny Corp., 920 F.3d at 1336, 2019 USPQ2d 127099, at *3; In re Genitope Corp., 78 USPQ2d 1819, 1822 (TTAB 2006) ("[T]he company name, address and phone number that appears at the end of the web page indicates only location information about applicant; it does not constitute a means to order goods through the mail or by telephone, in the way that a catalog sales form provides a means for one to fill out a sales form or call in a purchase by phone."). Merely providing a link to the websites of online distributors is not sufficient. There must be a means of ordering the goods directly from the applicant’s web page, such as a telephone number for placing orders or an online ordering process. In re Quantum Foods, Inc., 94 USPQ2d at 1380; In re Osterberg, 83 USPQ2d at 1224.
When a web-page specimen appears to be merely advertising, statements by the applicant that the specimen is used in connection with the sale of the goods, without evidence or a detailed explanation of the manner of use, will not suffice to establish that the specimen is a display associated with the goods. In re Osterberg, 83 USPQ2d at 1224 (finding that applicant’s mere statement in a signed declaration that copies of the web page were distributed at sales presentation lacked sufficient detail to transform the web page from an advertisement into a display associated with the goods).
Whether a web-page display qualifies as an acceptable specimen is a question of fact, based on the evidence of record. In re Siny Corp., 920 F.3d at 1336, 2019 USPQ2d 127099, at *3 (citing In re Marriott Corp., 459 F.2d 525, 526, 173 USPQ 799, 800 (C.C.P.A. 1972); Lands’ End, 797 F. Supp. at 514, 24 USPQ2d at 1316)); In re Azteca Sys., Inc., 102 USPQ2d at 1957. The presentation on the web page of the picture, photograph, or description of the goods, the manner of the mark’s use in association with those goods, and the nature of the ordering information affect the specimen’s acceptability. Thus, a specimen that describes or displays a picture or photograph of the goods, shows the mark, and provides ordering information may nonetheless be unacceptable because it fails to demonstrate a direct association between the mark and the goods or is not of a point-of-sale nature. Sometimes, a single fact or piece of evidence may be dispositive. Often, however, a combination of facts and evidence of record may be required to establish the acceptability of the specimen. If ordering information is not readily discernible from the submitted web page, the applicant may provide multiple, sequential web pages as part of the specimen to clarify the ordering process on the website.
See TMEP §904.03(i)(A)–(i)(D) for further discussion of the various factors for assessing whether a web page display is an acceptable specimen.
In order for a display to be associated with the goods (see TMEP §904.03(g)), there must be a reference to the goods on the web page, that is, a picture or description of the goods. See In re Sones, 590 F.3d 1282, 1288-89, 93 USPQ2d 1118, 1123-24 (Fed. Cir. 2009). A description will suffice if "the actual features or inherent characteristics of the goods are recognizable from the textual description." Id. at 1289, 93 USPQ2d at 1124. The level of detail required depends on the type of goods at issue. Id. Standard products (e.g., television sets, baseball gloves, or pet food) typically will not require a comprehensive description for the consumer to understand what the goods are. Complicated or sophisticated products (e.g., computer products, medical devices, or industrial machinery) may require a more detailed description, in the absence of a picture of the goods.
