904.03(i)(B)    Show the Mark in Direct Association with the Goods

A web-page display specimen "must in some way evince that the mark is ‘associated’ with the goods and serves as an indicator of source." In re Sones, 590 F.3d 1282, 1288, 93 USPQ2d 1118, 1123 (Fed. Cir. 2009). Assessing the "mark-goods" association on a web page involves many variables, including the prominence and placement of the mark, the content and layout of the web page, and the overall impression the web page creates. Web-page content and layout may sometimes distract consumers and prevent them from making the necessary connection between the mark and the identified goods. In re Azteca Sys., Inc., 102 USPQ2d 1955, 1958 (TTAB 2012) . Factors such as the proximity of the mark to the goods, the presence of other marks, intervening text between the mark and the goods, and the inclusion of other material that is unrelated or marginally related to the identified goods, tend to disrupt purchasers from making the mark-goods association, as shown in Example 2. Id.

Example 2: Applied-for mark is not directly associated with the goods.

Mark: GIS EMPOWERED BY CITYWORKS

Goods: Computer software for management of public works and utilities assets. [This wording is the identification of goods for the application in the Azteca decision. For information regarding the requirements for identifying computer software goods under NCL 11-2019, see TMEP §1402.03(d).]

• The applied-for mark appears distant from the description of the software, and is separated from the description by more than fifteen lines of text concerning marginally related topics;
• Due to the appearance of a number of other marks on the web page, it is unclear whether any particular mark is directly associated and used in connection with the identified goods;
• The left sidebar includes links to articles and news about applicant’s business and is not limited to the software goods.

The following features of a specimen particularly influence the mark-goods association analysis.

904.03(i)(B)(1)    Prominence of Mark

When determining whether a web page display specimen shows the mark in direct association with the goods identified in the application, the examining attorney may consider the prominence of the mark. See In re Osterberg, 83 USPQ2d 1220, 1223 (TTAB 2007) ("Another factor in the analysis of whether a specimen is an acceptable display used in association with the goods is whether the mark is displayed in a such a way that the customer can easily associate the mark with the goods." (citing In re Dell Inc., 71 USPQ2d 1725, 1728 (TTAB 2004) ).

The more prominently an applied-for mark appears on a web-page display, the more likely the mark will be perceived as being associated with the goods. A mark may appear more prominent when the specimen:

• presents the mark in larger font size or different stylization or color than the surrounding text;
• places the mark at the beginning of a line or sentence;
• positions the mark next to a picture or description of the goods; or
• uses the "TM" designation with the applied-for mark (however, the designation alone does not transform a mark into a trademark if other considerations indicate it does not function as a trademark).

Compare In re Quantum Foods, Inc., 94 USPQ2d 1375, 1378 (TTAB 2010) (describing an applied-for mark as "prominently displayed" on the specimen when the mark appeared by itself above pictures relating to applicant’s goods in relatively large font and in a different color than some of the other text on the page), with In re Osterberg, 83 USPQ2d at 1223 (finding the applied-for mark not so prominently displayed that customers would easily associate the mark with the goods, because it was buried in the middle of text describing the goods and, while the mark was shown in bold font, so was other matter). See In re Sones, 590 F.3d 1282, 1289, 93 USPQ2d 1118, 1124 (Fed. Cir. 2009) ("Though not dispositive, the ‘use of the designation "TM" . . . lends a degree of visual prominence to the term.’" (quoting In re Dell Inc., 71 USPQ2d at 1729 )); In re Quantum Foods, Inc., 94 USPQ2d at 1378-79 (concluding that applicant’s specimen did not show use of the applied-for mark as a trademark for the goods, despite the mark’s "TM" designation); In re Osterberg, 83 USPQ2d 1220 at 1224, n.4 ("The mere use of a superscript ‘tm’ cannot transform a nontrademark term into a trademark." (citing In re Brass-Craft Mfg. Co., 49 USPQ2d 1849, 1853 (TTAB 1998) ).

These factors are not dispositive, and the web page as a whole must be assessed to determine whether the applied-for mark functions as a trademark for the identified goods.

Alternatively, a mark may appear less prominently and be less likely to be perceived as a source indicator for the goods if it is:

• shown in the same font size, stylization, or color as the surrounding text;
• buried in a sentence; or
• encompassed within descriptive text such that the commercial impression of the mark is that of a descriptive term for the goods and not as a trademark.

See In re Osterberg, 83 USPQ2d at 1223.

904.03(i)(B)(2)    Placement of Mark and Proximity to the Goods

Appearance of Mark in Website and Email Addresses. When a mark appears only in the computer browser area as part of the URL, Internet address, or domain name of the website, consumers generally will not recognize such use as a source-identifying use. Instead, this use merely identifies the Internet location of the website where business is conducted and goods or services are offered. See, e.g., In re Roberts, 87 USPQ2d 1474, 1479-80 (TTAB 2008) (concluding that the mark IRESTMYCASE, which appeared as part of a website address, www.irestmycase.com, on applicant’s specimens, merely served as a contact address to reach the applicant and failed to function as a service mark for applicant’s services); In re Supply Guys, Inc., 86 USPQ2d 1488, 1493 (TTAB 2008) ( "[A]pplicant’s use of the term LEADING EDGE TONERS as part of the internet address, www.leadingedgetoners.com . . . identifies the website where applicant conducts its retail sales services. Obviously, a website can be used for multiple purposes and the simple fact that a term is used as part of the internet address does not mean that it is a trademark for the goods sold on the website."); In re Eilberg, 49 USPQ2d 1955, 1956 (TTAB 1998) (finding that the mark WWW.EILBERG.COM, when displayed in relatively small and subdued typeface below other contact information on applicant’s letterhead, merely indicated the Internet location of applicant’s website rather than functioning as a service mark for applicant’s legal services). Similarly, the use of the mark embedded in an email address would be viewed as part of the website address where applicant may be contacted, rather than as a trademark.

Placement in a Location Typical for a Retail-Store Service Mark. A mark may be located at the top of a web page, separated from the relevant goods by the website navigation tabs, which may direct consumers to information about the goods, the applicant, and the website. Since it is customary for retailers to place their store marks in this location, such use of the applied-for mark is likely be recognized as an online retail-store service mark, as shown in Example 3.

Example 3: Mark is associated with the services, but the specimen would not be acceptable as a display for the goods shown.

Mark: MACYS.COM

Services: Electronic retail department-store services

• The web page is not acceptable as a display associated with the goods shown because the mark is serving only as a service mark for retail store services featuring the goods of others (e.g., "Cuisinart" or "Polo by Ralph Lauren").
• The mark is located in the upper-left corner where retail service marks usually appear and is adjacent to the greeting "Welcome to macys.com."
• Other trademarks for various goods appear on the web page, such as "Cuisinart," "Club Room," "Charter Club," and "Polo by Ralph Lauren," which appear to be more directly associated with the goods.
• Retail store services indicia appear, such as "departments" on the right and "expresscheckout sign-in," "bridal registry," and "want a card? get one here" on the left.

The mark may also include wording (e.g., "market," "store," or "depot") that indicates use as a service mark. Nevertheless, a mark appearing in a location where service marks normally appear may qualify as a trademark if the web page demonstrates a direct association between the applied-for mark and the goods, and otherwise meets the elements of an acceptable display associated with the goods, as shown in Example 4. See In re Supply Guys, Inc., 86 USPQ2d at 1495-96 (noting that "a mark may serve both as a trademark and service mark" and that one "must look to the perception of the ordinary customer to determine whether the term functions as a trademark").

Example 4: Mark is directly associated with the goods, goods are pictured and described, and point-of-sale ordering information is provided.

Mark: HAPPY SOCKS

Goods: Clothes, namely, socks

• The mark is shown prominently in the upper-left corner of the web page, is followed by the "TM" designation, is located in close proximity to the goods, and appears to be the only mark on the web page associated with the goods.
• The reference to "our socks" under "Add to cart" button reinforces trademark use of the mark because it conveys that the socks sold on the web page are provided by HAPPY SOCKS.
• The web page contains sufficient product details to make the decision to purchase the goods, including picture and description; size, color, and quantity options; price; and material content of the goods.
• The ordering information is in the form of an "Add to cart" button adjacent to the picture and description of goods.

Furthermore, if a mark appears on a web page in a location where trademarks normally are not located, a "substantially larger and more prominent" placement of the mark thereon could result in acceptable trademark use, when the only products on the web page are the identified goods, the placement of the mark is such that the mark-goods association is evident and direct, and the web page otherwise meets the elements of an acceptable display associated with the goods. See Examples 5 and 6.

Example 5: Mark is directly associated with the goods, goods are pictured and described, and point-of-sale ordering information is provided.

Mark: COLE HAAN

Goods: Eyeglasses, sunglasses, cases for spectacles and sunglasses

• The mark is located in the upper-left corner of the web page and is prominently displayed.
• The mark is somewhat physically distant from the goods, but it appears to be the only mark on the web page associated with the goods, and the only products shown are the identified goods.
• Although the menu on the left, under "COLLECTIONS," does include other marks, these marks do not appear to be used in connection with the goods (i.e., the other marks are not located directly next to the pictures and descriptions of the goods) and the menu simply appears to inform consumers that they may also purchase from other brand-name "collections" on the website.
• Ordering information in the form of a "SHOPPING BAG" is included near the top of the web page.
• The mark may also function as a service mark for retail store services since the menu on the left of the web page contains various categories of goods sold in the store, identifies other brand names carried by the store, and provides a "STORES" link on the bottom for locating physical stores.

Example 6: Mark is directly associated with the goods, goods are pictured and described, and point-of-sale ordering information is provided.

Mark: BROOKS BROTHERS

Goods: Bed sheets, dust ruffles, duvet covers, pillow cases, pillow shams, bed shams, bed spreads, towels, and wash cloths

• The mark is shown prominently in large font and placed above the pictures of the goods.
• No other marks appear to be used in connection with the identified goods apart from the sheep design placed near the goods, which is also associated with the goods.
• The web page contains pictures and descriptions of the goods, size and color selections, and price information.
• The web page would also be an acceptable specimen if the mark were for retail store services because the mark is located where retail service marks are typically located and the "FIND A STORE" tab indicates the presence of physical stores, thus reinforcing service mark usage.

Located in or Near Corporate Contact Information. A mark that appears on a web page only in conjunction with the corporate address, telephone number, and website and email addresses, and/or is placed on the web page near boilerplate and standard information about the applicant or the website (e.g., "Home" and "About Us" links, legal notices, or technical requirements of the website) is less likely to be seen as a trademark and more likely to be perceived merely as a trade name under which the applicant conducts business. See In re Walker Process Equip. Inc., 233 F.2d 329, 331-32, 110 USPQ 41, 43 (C.C.P.A. 1956) (indicating that the placement of the applied-for mark WALKER PROCESS EQUIPMENT INC. above wording denoting applicant’s location suggested that the mark was not used as a trademark, but as a trade name).

Presence of Other Marks. In some instances, the appearance of more than one mark (whether word or design marks) on the web page may distract consumers and make it less likely that they will make an association between the applied-for mark and the relevant goods. See In re Azteca Sys., Inc., 102 USPQ2d 1955, 1958 (TTAB 2012) . The location of each mark, particularly the applied-for mark, in relation to the identified goods may affect whether it is associated with the goods (see Example 7) or, instead, serves only as a service mark or trade name.

Example 7: Mark is directly associated with the goods, goods are pictured and described, and point-of-sale ordering information is provided.

Mark: KEEPING YOU COZY.

Goods: Jackets

• The mark is located below the website navigation tabs and is prominently displayed in large font followed by the "TM" designation.
• The mark is physically near the goods and would be perceived to be associated with them.
• The web page features product information in the form of pictures and descriptions of the goods along with prices.
• The links under each product combined with the "BUY ONLINE NOW!" instruction indicate that direct ordering is possible.
• If the proposed mark were "T. Markey Your Clothing Emporium" (as it appears in the upper-left corner), the web page would not be acceptable for goods because it is located where service marks are commonly placed and seems to function as a retail store service mark, there is other matter separating the mark from the goods, and there are other marks located closer to the goods and better associated with the goods.

The nature of the wording and design elements of each mark on the specimen and the appearance of the same or similar elements in the various marks may also influence whether the applied-for mark would be perceived as a trademark for the relevant goods, as in Example 8.

Example 8: Mark is directly associated with the goods, goods are pictured and described, and point-of-sale ordering information is provided.

Mark: T.MARKEY YOUR CLOTHING EMPORIUM

Goods: Shirts

• The mark is located at the top of the web page and is prominently displayed.
• Although the mark is located above the website navigation tabs and appears in conjunction with a slogan that refers to retail store services (i.e., "Your Clothing Emporium"), the mark still appears associated with the goods because the goods are shown immediately below the navigation tabs and the identified goods are the only products shown.
• Another mark seems to be used in connection with the goods (i.e., "Let T.Markey Bundle You Up." and design). However, multiple marks may function as a source indicator for the same goods. Here, both marks contain the same term "T.Markey," suggesting the marks indicate the same source, and both appear near to and in association with the goods.
• The web page provides product information in the form of pictures and descriptions of the goods, prices, and size options.
• The telephone number is an acceptable means of ordering, even though it is not accompanied with special ordering instructions, because there is sufficient product information to make the decision to purchase the goods and the telephone number is prominently displayed and positioned in close proximity to the product information, implying that the goods may be ordered by calling the telephone number. If the telephone number had been listed near or as part of applicant’s address, it would not be sufficient ordering information since it would be perceived as part of the corporate contact information and not as a means for purchasing the goods.

Mark-goods association is more likely when the applied-for mark is located physically near the goods and no other marks appear to be used in connection with the goods, as in Example 9.

Example 9: Mark is directly associated with the goods, goods are pictured and described, and point-of-sale ordering information is provided.

Mark: TEEYAK

Goods: Sunglasses and hats

• The mark appears below the website navigation tabs and is prominently displayed in large font followed by the "TM" designation.
• The mark appears physically near the goods and is directly associated with them.
• Although another mark (i.e., "T.Markey Your Clothing Emporium") appears on the web page, it seems to function as a retail store service mark since it is located where service marks are commonly placed, there is other matter separating the mark from the goods, and there is another mark placed closer to the goods and better associated with them.
• Product information is provided in the form of pictures and descriptions of the goods along with prices.
• The links under each product combined with the "BUY ONLINE NOW!" instruction indicate that direct ordering is possible.
• In the absence of links and the "BUY ONLINE NOW!" instruction, the telephone number would not be acceptable ordering information because it appears to be part of corporate contact information provided to obtain information about the product or the company and not intended as a means of placing or accepting orders.

Mark-goods association becomes less likely if other marks are used in connection with the goods and appear to be trademarks for those goods, as in Example 10.

Example 10: Applied-for mark does not function as a trademark.

Mark: LEADING EDGE TONERS

Goods: Numerous goods including toner, toner cartridges, ink sticks, components for laser toner cartridges, and printer parts

• Use of the applied-for mark in the URL identifies the website where applicant’s retail services are conducted and does not show trademark use.
• The applied-for mark may function as a service mark for retail store or distributorship services, rather than as a trademark, because it appears in the upper-left corner of the web page where service marks normally appear and there are other marks that seem to be used in connection with the goods.
• The use of the applied-for mark in phrases containing third-party trademarks that are used to identify goods of third parties (e.g., "Leading Edge Toners Best Prices for Tektronix Toners" or "The Price Leader for Xerox/Tektronix Toner.") does not constitute trademark use and, instead, signifies that the applicant is a retail store or distributorship that sells the goods of others.