A web-page display associated with the goods (see TMEP §904.03(g)) must provide a means of ordering the goods, either directly from the web page itself (e.g., web page contains a "shop online" button or link) or from information gleaned from the web page (e.g., web page lists a telephone number designated for ordering). See In re Siny Corp., 920 F.3d 1331, 1336, 2019 USPQ2d 127099, at *3 (Fed. Cir. 2019); In re MN Apparel LLC, 2021 USPQ2d 535, at *16 (TTAB 2021); In re Quantum Foods, Inc., 94 USPQ2d 1375, 1378-79 (TTAB 2010). If the web page offers no way to purchase the goods, the web page is not a display associated with the goods but merely an advertisement and thus is not an acceptable specimen type for goods. See In re Quantum Foods, Inc., 94 USPQ2d at 1378-80; In re Osterberg, 83 USPQ2d 1220, 1224 (TTAB 2007); In re Genitope Corp., 78 USPQ2d 1819, 1822 (TTAB 2006).
Indicators of the ability to buy the goods via the web page may include:
See, e.g., In re Anpath Grp., 95 USPQ2d 1377, 1381 (TTAB 2010) ; In re Quantum Foods, Inc., 94 USPQ2d at 1379.
Determining the sufficiency of ordering information is a nuanced analysis requiring an examination of the web page content and layout in terms of the level of detail provided about both the goods and the means for ordering them. The more specific and clear the means of immediately and directly ordering the goods on the web page (e.g., "shopping cart" or "Call 1-800-xxx-xxxx to Order Now"), the less detailed the information about the product features and specifications needs to be (e.g., price, size, color, or style), as shown in Example 11.
Example 11: Mark is directly associated with the goods, goods are pictured and described, and point-of-sale ordering information is provided.
Mark: RING IN THE NEW YEAR WITH OUR RINGS
Goods: Rings
Conversely, the more detailed the product information is on the web page, the less detailed the ordering information needs to be (e.g., providing a telephone number without specifically stating that it be used to place orders). See Example 8 at TMEP §904.03(i)(B)(2). Although pricing information is normally associated with ordering goods, the presence or absence of pricing on its own is not determinative of whether the web page provides sufficient ordering information. Compare In re Dell Inc., 71 USPQ2d 1725, 1728-29 (TTAB 2004) (concluding that a web-page specimen used in connection with applicant’s computer hardware, which provided information about the goods but did not show the price of the goods, met the requirements for a display associated with the goods), and TMEP §904.03(h) (indicating that it is not necessary for a catalog specimen to list the price of the goods to meet the criteria for a display associated with the goods), with In re Quantum Foods, Inc., 94 USPQ2d at 1379 (listing pricing information as information normally associated with ordering goods and noting the absence of pricing or other ordering information on the applicant’s web page specimen to purchase the goods), and In re MediaShare Corp., 43 USPQ2d 1304, 1305 (TTAB 1997) (concluding that applicant’s specimen was merely advertising material because it lacked the price of the goods and other information normally associated with ordering goods). If the goods can be ordered via the information contained on the web page, then, presumably, the price will be presented at some point before the order is completed.
See TMEP §904.03(i)(C)(1)-(i)(C)(3) for a discussion of the common features of websites and the issues to consider when determining whether these features constitute sufficient means of ordering the goods.
Frequently used methods of ordering goods online include buttons and links identified as "shopping cart," "shopping bag," "add to cart," and "buy" that permit a consumer to directly purchase the goods. See Example 3 at TMEP §904.03(i)(B)(2), §904.03(i)(C)(1). The presence of these features conveys the web page’s point-of-sale character. For intangible goods, such as downloadable computer software programs, buttons and links for downloading, buying, or ordering goods should be considered sufficient ordering information. See TMEP §904.03(e).
"Where to buy" buttons and links are usually unacceptable since they typically provide only contact information for the retailers, wholesalers, or distributors of the goods instead of functioning as a means of directly ordering the goods, as shown in Example 12. See In re Osterberg, 83 USPQ2d 1220, 1224 (TTAB 2007) (finding a "Where to Buy" link insufficient ordering information since the record contained no information about what the link included and applicant’s explanation in the appeal brief indicated that the link provided consumers a list of distributors and their websites from whom goods may be purchased).
Example 12: Web page specimen is not acceptable because, among other things, it lacks point-of-sale ordering information.
Mark: CONDOMTOY CONDOM
Goods: Condoms
In most cases, telephone numbers and email addresses alone will not transform mere advertising into a display associated with the goods even though it is common to sell products on-line or over the telephone. See In re Anpath Grp., 95 USPQ2d 1377, 1382 (TTAB 2010) . However, they may suffice if accompanied by special instructions for placing or accepting orders, such as "call now to buy" or "email your order." If no ordering instructions appear, telephone numbers and email addresses may be sufficient if: (1) the web page contains enough product and ordering information to enable the consumer to buy the goods (e.g., the web page shows the goods; offers size, color, or quantity selections; price; identifies credit card payment options; or states shipping methods); (2) the record contains an explanation or evidence that clearly supports the conclusion that the telephone number or email address can be used for ordering, rather than merely for obtaining information about the goods or the ordering process; or (3) the telephone number or email address is prominently placed close to the goods, indicating it as a means of ordering (see Example 8). See In re Valenite Inc., 84 USPQ2d 1346, 1349 (TTAB 2007) ; In re Osterberg, 83 USPQ2d at 1224 (indicating that applicant’s web-page specimen might have met the ordering information requirement for a point-of-purchase display if the web page had contained a telephone number or online process for ordering the goods, or if the record otherwise showed that "a purchase [could] be made directly from the webpage or from information provided in the webpage").
However, even where a web page provides sufficient product information for the consumer to make the decision to purchase the goods, a telephone number or email address may not show the requisite means of ordering if it only appears with applicant’s corporate contact information, as shown in Example 13. See In re Genitope Corp., 78 USPQ2d 1819, 1822 (TTAB 2006) (concluding that the company name, address, and phone number appearing at the end of applicant’s web page "indicate[d] only location information about applicant; it [did] 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").
Example 13: Web-page specimen is not acceptable because it lacks point-of-sale ordering information.
Mark: Design of "fingerprint man"
Goods: Biopharmaceutical preparations used to treat cancer in humans, namely, individualized cancer treatments prepared specifically for each individual patient from whom tumor tissue has been received.
By contrast, an email address may be an acceptable means of ordering if the address itself indicates that orders may be placed or are accepted via email (e.g., order@t.markey.com).
The rare case of specialized industrial goods or similarly complex or sophisticated goods for which technical assistance is required in selecting the product or determining the product specifications may present a special situation as to a telephone number showing the requisite ability to order. In such a special situation, the telephone number would suffice if product information is available on the web page or website and the evidentiary record adequately explains the specialized nature of the goods, the industry practice for ordering them, and the need to consult with sales staff over the telephone to place customized orders. In the case In re Valenite Inc., the Board found a web page containing a link to an online catalog, along with a toll-free number and links to customer service and technical support, to be an acceptable specimen, where the goods (industrial tools) were specialized industrial goods, and the record contained declaration evidence that purchase of the goods requires careful calculation and technical knowledge, and that the phone numbers were in fact used to order the goods. In re Valenite Inc., 84 USPQ2d at 1349-50 ("[A]pplicant’s website, in addition to showing pictures of the goods, provides an on-line catalog, technical information apparently intended to further the prospective purchaser’s determination of which particular product to consider, an online calculator and both a link to, and phone number for, customer service representatives. Therefore, applicant’s website provides the prospective purchaser with sufficient information that the customer can select a product and call customer service to confirm the correctness of the selection and place an order."); cf. In re U.S. Tsubaki, Inc., 109 USPQ2d 2002, 2007 (TTAB 2014) (stating that "where it is asserted that the nature of the goods and the consumers . . . require more involved means for ordering products, it is critical that the examining attorney be provided with detailed information about the means for ordering goods, and that such information be corroborated by sufficient evidentiary support."). The Valenite decision should not be interpreted as a broad-reaching change in USPTO practice regarding the determination of whether a website page constitutes a display associated with the goods. If it appears that the web page merely provides information about the goods, but does not provide a means of ordering the goods directly from the applicant’s web page, it should be viewed as promotional material and a refusal should be issued. Id. at 2009 (finding that specimens did not contain adequate information for making a decision to purchase the goods and placing an order and, therefore, were advertisements). Given the narrow range of scenarios to which this decision applies, examining attorneys generally should avoid suggesting reliance on Valenite to overcome a specimen refusal.
"Contact Us" buttons and links usually are not acceptable because they generally do not enable direct ordering of the goods. These buttons and links typically route consumers to a different web page that offers only an invitation to obtain more information about the goods, or about the retailers, wholesalers, or distributors who actually sell the goods, as shown in Example 14. See, e.g., In re Quantum Foods, Inc., 94 USPQ2d 1375, 1379 (TTAB 2010) (noting that the "contact us" link on applicant’s web-page specimen did not take customers to an order form, but instead routed to a web page with applicant’s email address and telephone number); cf. In re Genitope Corp., 78 USPQ2d 1819, 1822 (TTAB 2006) (stating that the web page did not provide a link to order the goods or explain how to order them, where the web page contained a link for "click here for more information" and provided links for "Patient Backgrounder" and "Patient Resources" for "more information on personalized immunotherapy and our products").
Example 14: Web-page specimen is not acceptable because it lacks point-of-sale ordering information.
Mark: PROVIDING PROTEIN AND MENU SOLUTIONS
Goods: Processed meats, beef, pork, poultry and seafood sold in portions; fully cooked entrees consisting primarily of meat, beef, pork, poultry or seafood
By analogy, a seller’s contact information that often appears in advertisements does not provide a sufficient means of ordering, in contrast to a telephone number on a sales form designated to accept orders. In re Genitope Corp., 78 USPQ2d at 1822.
Similarly, "Customize" and "Configure" buttons and links that allow customers to configure the goods generally are insufficient by themselves, since such features only enable personalization and not necessarily purchase of the goods. For these buttons and links to be deemed adequate means of ordering, the record must contain evidence that they permit customers to actually buy the goods. See In re Dell Inc., 71 USPQ2d 1725, 1727 (TTAB 2004) (finding that a "Customize It" link was sufficient ordering means when the information on the website clearly indicated that the goods could be bought online via the link).
In some cases a specimen may consist of an excerpt from a website labeled as "beta." This term is commonly used to describe a preliminary version of a product or service. Although some beta websites may not be accessible to consumers, others are. Thus, the use of this term in connection with an apparently functioning website shown in a specimen does not, by itself, necessarily mean that the relevant goods or services shown on the website 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 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."
If printed matter included with the goods functions as a part of the goods, such as a manual that is part of a kit for assembling the product, then placement of the mark on that printed matter does show use on the goods. In re Ultraflight Inc., 221 USPQ 903, 906 (TTAB 1984) ("We believe the instruction manual is as much a part of applicant’s goods as are the various parts that are used to build the gliders. Application of the mark to the manual of assembly instructions, then, must be considered affixation to the goods.").
The USPTO 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, or displays associated with the goods. 15 U.S.C. §1127 (definition of "use in commerce"); 37 C.F.R. §2.56(b)(1). This provision is not intended as a general alternative to submitting labels, tags, containers, or displays associated with the goods; it applies only to situations when the nature of the goods makes use on these items impracticable. For example, in rare circumstances it may be impracticable to place the mark on the goods or packaging for the goods if the goods are natural gas, grain that is sold in bulk, or chemicals that are transported only in tanker cars. In such instances, an acceptable specimen might be an invoice, a bill of lading, or a shipping document that shows the mark for the goods.
A mere assertion of impracticability does not suffice to establish that traditional trademark use is impracticable. Rather, the record must indicate that the goods are, in fact, of such a nature. In In re Settec, Inc., 80 USPQ2d 1185 (TTAB 2006) , the applicant asserted that placing the mark on the goods or on displays associated with the goods in the traditional manner was impracticable because the purpose of the goods was to provide digital media copy protection to media content providers, and placing the mark on the final product available to the ultimate end-user would impair the value of the goods, because the end-user would thereby be armed with an additional piece of the encryption puzzle. The Board rejected this contention, finding that there were a variety of ways in which applicant could use its mark in the traditional manner without making it available to the end-user.
To show that a motion mark actually identifies and distinguishes the goods or services and indicates their source, an applicant must submit a specimen that depicts the motion sufficiently to show how the mark is used on or in connection with the goods or services, and that matches the required description of the mark. In addition, the mark shown in the specimen must match the mark shown in the freeze frames comprising the drawing. In re The Ride, LLC, 2020 USPQ2d 39644, at *4 (TTAB 2020); see 37 C.F.R §2.51(a).
Although the drawing for a motion mark may depict a single point in the movement, or up to five freeze frames showing various points in the movement, an acceptable specimen should show the entire repetitive motion in order to depict the commercial impression conveyed by the mark (e.g., a video clip, a series of still photos, or a series of screen shots).
For applications under §1(a), as well as response, statement of use/amendment to allege use, petition, and registration maintenance/renewal filings, the specimen must be attached to the TEAS form in a file format designated as acceptable by the USPTO, such as an electronic file in .wav, .wmv, .wma, .mp3, .mpg, or .avi format. Audio files should not exceed 5 MB in size and video files should not exceed 30 MB because TEAS cannot accommodate larger files. 37 C.F.R. §2.56(d).
See TMEP §807.11 regarding drawings for motion marks and §904.02(a) regarding specimens filed electronically.
For an application under §1(a), as well as a response, statement of use/amendment to allege use, petition, or registration maintenance/renewal filing in which a specimen for a scent, flavor, or similar non-traditional mark is being submitted, the applicant must mail the scented or flavored goods to the USPTO. 37 C.F.R. §2.56(d)(1). A specimen for these types of non-traditional marks may not be submitted electronically. See 37 C.F.R. §2.23(a); TMEP §§301.01, 301.02(d).
To show that the specimen for a scent or flavor mark actually identifies and distinguishes the goods and indicates their source, an applicant must submit a specimen that contains the actual scent or flavor and that matches the required description of the scent or flavor. In most cases, the specimen will consist of the actual goods themselves because the examining attorney must be able to smell or taste the scent or flavor to determine whether the specimen shows use of the mark in connection with the goods.
A "scratch and sniff" sticker for a scent mark is an acceptable specimen, provided that it is part of the packaging for the goods or is used in such a manner as to identify the goods and indicate their source.
To submit a specimen for a non-traditional mark, applicants must first submit information about the specimen online using the appropriate TEAS form and then mail in the physical specimen following the guidance in TMEP §305. The TEAS forms have a checkbox on the Use Information page that must be selected to indicate that a specimen for a non-traditional mark will be submitted by mail. In these circumstances, the applicant or registrant is not required to submit a petition under 37 C.F.R. §2.147 requesting acceptance of a specimen filed on paper or waiver of the requirement to file the specimen electronically. See 37 C.F.R. §2.56(d)(1).
This exception does not apply to sound, motion, and color marks, because electronically filed specimens are sufficient to determine their registrability. Applicants are required to submit specimens for these marks electronically. See TMEP §904.03(f), (l).
See also TMEP §807.09 and §1202.13 regarding scent and flavor marks.
. . .
(c)…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.
A photocopy of the drawing required by 37 C.F.R. §2.51 is not a proper specimen. 37 C.F.R. §2.56(c). Similarly, the specimen may not be a "picture" of the mark, such as an artist’s rendering, a printer’s proof, a computer illustration, or an image of the goods or its packaging or advertising matter for services that has been digitally created/altered or mocked up to include the mark. Such items do not show actual use of the mark on or in connection with the goods or services in commerce and registration must be refused under Sections 1 and 45 of the Act. 15 U.S.C. §§1051, 1127; see In re Chica, 84 USPQ2d 1845, 1848 (TTAB 2007) (holding that "a mere drawing of the goods with an illustration of how the mark may be displayed" was not an acceptable specimen because it did not show actual use in commerce); In re The Signal Cos., 228 USPQ 956, 957-58 n.4 (TTAB 1986) (noting that a printer’s proof of an advertisement would not be an acceptable specimen because it is does not show actual use in commerce). See TMEP §901.01 regarding the definition of "use in commerce" and §904.07(a) for further discussion of "use-in-commerce" refusals.
A digitally created/altered or mockup specimen consists of an image created for the purpose of showing how the mark might be used in connection with the goods or services. Such specimens do not evidence actual use of the mark on goods sold or transported in commerce, or in the case of services, displayed in connection with services actually rendered in commerce, all in the ordinary course of trade, as required by 15 U.S.C. §1127.
Digitally created/altered or mockup specimens range from those that are clearly manipulated to those that are more difficult to identify. The following characteristics or circumstances may indicate a digitally created/altered or mockup specimen.
This list is not exhaustive; other characteristics and circumstances not listed above also may indicate a specimen does not show use of the mark in commerce.
Examining attorneys and post registration specialists must carefully evaluate each specimen for signs indicating that it may have been digitally created/altered or is a mockup. Descriptions of the specimens should be taken into consideration. However, if facts in the record contradict the accuracy of the description of the specimen, these must be considered when determining the acceptability of the specimen.
Retouched images. Where the specimen is an image of a product bearing the mark and the image appears to be a retouched image, the examining attorney may conduct research to confirm that a product depicted in the specimen exists. If the examining attorney is able to confirm that the product depicted in the specimen exists and shows use of the mark in commerce, the examining attorney may accept the specimen. In that case, the examining attorney must enter a Note to the File that indicates what resources were checked without including any statements or legal conclusions regarding the use of the mark. The Note to the File may be "checked applicant’s website at [URL of page checked]" or "checked Amazon.com at [URL of page checked]." In instances where the examining attorney confirms that a product exists bearing the mark, but the content of the listing or page where the product is found is suspicious for other reasons that indicate it is unlikely that products or services offered under the mark have actually been sold or rendered in commerce, the examining attorney may issue requests for information concerning the applicant’s use of the mark. 37 C.F.R. §2.61(b).
Refusing Digitally Created/Altered or Mockup Specimens. Submissions of this type shall be refused under Trademark Act Sections 1 and 45 (15 U.S.C. §§1051, 1127 ) if submitted prior to registration, or under Sections 8 or 71 and 45 (15 U.S.C. §§1058, 1127, 1141k ) if submitted post registration, because they do not show actual use of the mark in commerce. See TMEP §904.04(a). The refusal must include an explanation of the reasons the specimen appears to be digitally created or altered.
When issuing a refusal based on the specimen not appearing to show actual use of the mark in commerce, the examining attorney must also issue a request for information under 37 C.F.R. §2.61(b) requiring the applicant to provide detailed information about the submitted specimen and other information and documents relevant to aiding a determination as to whether the mark is actually in use in commerce.
A request under 37 C.F.R. §2.61(b) may require information regarding one or more of the following: (1) the goods or services for which the specimen was submitted; (2) whether the specimen was created for submission with the application and if so, when; (3) the source of the image depicting goods; (4) how the mark is used on goods in the actual sales environment or in the rendering or performing the services, including representative examples showing such use and URLs and publication dates for web pages; (5) when the goods or services were first available for purchase and whether they are still for sale; (6) proof of sales in commerce with or within the United States for the goods in the specimen, redacting personal or private information of buyers as necessary; (7) proof of use for additional goods or services identified in the application; and (8) any other information relevant to a determination regarding actual use of the mark in commerce on or in connection with the identified goods/services. However, an examining attorney should ensure that the request for information is tailored to the particular facts of an application and generally should not seek information that already exists in the record.
In most cases, the examining attorney will issue a refusal of registration under Sections 1 and 45 for failure to show use in commerce is being made. Only in very limited circumstances where the examining attorney cannot point to indicia on the specimen itself to support a refusal but there is something suspicious about the contents or display of the specimen that suggests that the mark is not in actual use in commerce, and the examining attorney needs more information for proper examination of the issue, may an examining attorney issue a request for information without also issuing a refusal.
In every case, the examining attorney must also include all other relevant specimen-based grounds in the refusal under Sections 1 and 45. For example, applications containing digitally created/altered or mockup specimens may not show use of the mark with any of an applicant’s goods or services listed in the application. Likewise, a digitally created website or advertisement also may not show a direct association between the mark and the goods or services. Additionally, if the specimen fails to show the mark functioning as a mark (e.g., the mark is merely informational or is used in an ornamental manner) the examining attorney must also issue a refusal under Sections 1, 2, and 45 or Sections 1, 2, 3, and 45, as appropriate. See TMEP §§904.07(a), (b).
Evidence for refusal of specimen. Generally, extrinsic evidence is not required to support a first-action refusal for a digitally created/altered or mockup specimen because the specimen itself provides the evidence why it cannot be accepted. Nevertheless, the examining attorney should conduct a search for an image if the examining attorney recognizes the image as appropriated or if there are other signs that the specimen is digitally created or altered or a mockup. Such evidence should be provided to create a more comprehensive record in a final refusal.
The examining attorney may use free image search and analysis tools available online, such as Google®. When making Google® evidence part of the record, the examining attorney must both (1) provide complete information as to the date the evidence was published or accessed from the Internet and its source (e.g., the complete URL address of the website), and (2) download and attach the evidence to the Office action. See TMEP §710.01(b).
Other sources of evidence the examining attorney may consider are Office records such as an X-search record for a registration for the trade dress associated with an appropriated image or a copy of the specimen from the file of the registered mark associated with an appropriated image.
Evaluating Responses. An applicant’s response options to the refusal are to: (1) submit a verified substitute specimen showing actual use in commerce; (2) amend the filing basis to Section 1(b) (and submit an acceptable specimen with a later-filed amendment to allege use or a statement of use); or (3) argue that the original specimen shows actual use in commerce. If the applicant submits an acceptable substitute specimen or amends the filing basis to Section 1(b), the request for information will be withdrawn.
If the applicant satisfactorily responds to all requests for information and the original specimen does not contradict those responses, the specimen must be accepted. If the applicant does not respond to the request for information, but provides a substitute specimen meeting the requirements of 37 C.F.R. §2.56, the examining attorney may generally accept the substitute specimen and withdraw the requirement for information. However, if (1) other evidence or information calls the acceptability of the substitute specimen or its use in commerce into question or (2) the applicant does not provide an acceptable substitute specimen and fails to respond or provides incomplete or unsatisfactory responses to the request for information, the examining attorney must issue a final refusal as to the specimen under Sections 1 and 45 and a final requirement as to the request for information under 37 C.F.R. §2.61(b).
