904.03(i) Electronic Displays
A web page that displays a product can constitute a "display associated with the goods" (see TMEP §904.03(g)) if it:
- (1) contains a picture, photograph, or textual description of the identified goods;
- (2) shows the mark in association with the goods; and
- (3) provides a means for ordering the identified goods.
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
- The mark is located below the website navigation tabs and is prominently displayed.
- The mark appears physically close to the goods and is repeated in the links located under each product, indicating a direct association with the goods.
- No other marks appear to be used in connection with the goods apart from the alligator design and the product style names, all of which are associated with the goods.
- Product information is provided in the form of pictures and descriptions of the goods along with prices.
- There is a "shopping bag" at the top of the web page to enable direct ordering.
- Even if the web page did not include the larger LACOSTE mark, the LACOSTE marks depicted under the photographs of the goods (e.g., Lacoste "Brighton" Comforter Set or Lacoste "Confetti" Comforter Set) would be acceptable to show trademark use for the goods.
- If the proposed mark were "Macy’s" (as it appears in the upper-left corner), the web page would not be acceptable for goods because of the closer proximity and association of the other marks with the goods (i.e., the LACOSTE and alligator).
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.
904.03(i)(A) Picture or Description of the Goods
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.
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.
904.03(i)(C) Ordering Information
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:
- 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, 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
- The mark is located on the bottom of the web page and is followed by the "TM" designation.
- The mark is in close proximity 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 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.
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), §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
- 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 directly 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 Email Addresses
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.
- The web page provides no actual means of ordering the 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 the goods.
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.
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 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
- 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 email 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).
904.03(i)(D) Beta Websites
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."