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 following features of a specimen particularly influence the mark-goods association analysis.
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:
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:
See In re Osterberg, 83 USPQ2d at 1223.
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 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
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
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
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 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
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
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