904.03(i)(C) Ordering Information
A point-of-sale web-page display 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 Quantum Foods, Inc., 94 USPQ2d 1375, 1378-79 (TTAB 2010); In re Osterberg, 83 USPQ2d 1220, 1224 (TTAB 2007). If the web page offers no way to purchase the goods, the web page is merely an advertisement and not a display associated with the goods. See In re Quantum Foods, Inc., 94 USPQ2d at 1378-80; In re Osterberg, 83 USPQ2d at 1224; In re Genitope Corp., 78 USPQ2d 1819, 1822 (TTAB 2006).
Indicators of the ability to buy the goods via the web page may include:
- a sales order form to place an order, an online process to accept an order, such as "shopping cart" functionality, or special instructions on how to order;
- information on minimum quantities;
- indication of methods of payment ;
- information about shipment of the goods; and/or
- means of contacting the applicant to place an order.
See 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 associated with the goods, goods are pictured and described, and ordering information is provided.
Mark: RING IN THE NEW YEAR WITH OUR RINGS
Goods: Rings
- The mark is placed on the bottom of the web page and is followed by the "TM" designation.
- The mark is close to the picture of the goods and contains the term "RINGS" which references the goods.
- The "SHOP ONLINE" tab and the "SHOP" link indicate direct ordering via the web page.
- Web page is also acceptable for goods if the proposed mark were "T.Markey Jewelry" (in upper-left corner) because it is located close to the picture of the goods and both the proposed mark and the "T.Markey Jewelry" mark indicate common origin since it can be inferred that the wording "OUR RINGS" in the proposed mark refers to rings by T.Markey Jewelry.
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 in order 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)-904.03(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.
904.03(i)(C)(1) "Shopping Cart" and "Shopping Bag" Buttons and Links
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). 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 ordering information.
Mark: CONDOMTOY CONDOM
Goods: Condoms
- The web page provides no means of ordering goods. While there is a "Where to Buy" button at the top, the record does not contain the underlying page the button would lead consumers to. While the applicant explained in the appeal brief that the link connects shoppers with distributors of the goods, the TTAB found this to be insufficient because consumers were not able to immediately and directly purchase the goods.
- The applied-for mark is not associated with the goods because (1) the packaging for the goods shown on the web page shows the trademark "Inspiral" and not the applied-for mark, (2) the applied-for mark is not prominently displayed since it is buried in text and is not the first word of a sentence, and (3) while the applied-for mark is shown in bold font, the web page contains other descriptive terms that also appear in bold font.
- The applicant submitted a declaration that lacked sufficient detail or explanation of how the web page is used at the point of sale.
904.03(i)(C)(2) Telephone Numbers and E-mail Addresses
In most cases, telephone numbers and e-mail addresses alone will not transform mere advertising into point-of-sale displays 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 "e-mail your order." If no ordering instructions appear, telephone numbers and e-mail 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 e-mail 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 e-mail 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 e-mail 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 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.
- The web page provides no actual means of ordering goods since it states that the study is closed to patient registration and provides a link to "click here for more information" about the product instead of to order the product, and the page to which the link leads is not of record.
- The company name, address, and telephone number at the bottom is only information about applicant’s location and not a means of ordering goods.
By contrast, an e-mail address may be an acceptable means of ordering if the address itself indicates that orders may be placed or are accepted via e-mail (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. 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.
904.03(i)(C)(3) "Contact Us," "Customize," or "Configure" Buttons and Links
"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 e-mail 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 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
- The web page provides no means of ordering goods (e.g., no sales form, pricing, offers to accept orders, special instructions for ordering, or opportunity and means to order online) and the minimal product information makes it unclear what the goods are.
- The TTAB found insufficient applicant’s claims that placing the cursor over "FOODSERVICE" reveals a drop-down menu from which the "contact us" link is selected, which brings up a web page containing an e-mail address and telephone number for applicant’s customer service department for ordering the goods.
- Simply providing a "contact us" link does not convert advertising into a display and, in fact, the "contact us" link here does not even enable ordering, but only leads to applicant’s contact information. While the "Contact Us" web page was rejected as untimely, the TTAB stated that, although it may ultimately result in a sale, the "Contact Us" web page "appears to be no more calculated to do so than any corporate contact e-mail address or phone number that would result in the call or e-mail being referred to the sales office." In re Quantum Foods, Inc., 94 USPQ2d 1375, 1377 n.2 (TTAB 2010).
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).