904.03(i)   Electronic Displays

A website page that displays a product, and provides a means of ordering the product, can constitute a "display associated with the goods," as long as the mark appears on the web page in a manner in which the mark is associated with the goods, and the web page provides a means for ordering the goods.  See In re Sones, 590 F.3d 1282, 93 USPQ2d 1118 (Fed. Cir. 2009).  Web pages that display the trademarks in association with a picture of the goods or a sufficient description of them to understand what they are, and provide for online ordering of such goods are, in fact, electronic displays associated with the goods.  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. Id. 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.

Such web pages are not merely advertising, because in addition to showing or describing the goods, they provide a link for ordering the goods.  In effect, the website is an electronic retail store, and the web page is a shelf-talker or banner which encourages the consumer to buy the product.  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.  The web page is, thus, a point-of-sale display by which an actual sale is made.  In re Dell Inc., 71 USPQ2d 1725 (TTAB 2004).

However, an Internet web page that merely provides information about the goods, but does not provide a means of ordering them, is viewed as promotional material, which is not acceptable to show trademark use on goods.  See 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 1375, 1380 (TTAB 2010); In re Osterberg, 83 USPQ2d 1220, 1224 (TTAB 2007).

The mark must also be displayed on the web page in a manner in which customers will recognize it as a mark.  In re Morganroth, 208 USPQ 284 (TTAB 1980); see also Osterberg, 83 USPQ2d at 1223 (finding that CONDOMTOY CONDOM was not displayed so prominently on web page specimen that consumers would recognize it as a trademark for condoms).

It is important to consider whether the goods are specialized in nature when determining whether web page specimens constitute a display associated with the goods.  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 online phone numbers were in fact used to order the goods.   84 USPQ2d 1346, 1349-50 (TTAB 2007) ("[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.").

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.  Pursuant to Valenite, the applicant may overcome the refusal by submitting additional extrinsic evidence that:  (1) the specialized, industrial nature of the goods is such that they cannot simply be ordered from a web page by adding the product to a "shopping cart;" (2) the practice in the industry is for customers to seek technical assistance prior to placing an order; and (3) the telephone number shown on the specimen is used by customers for customer service or technical support and to place orders.  However, 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.

Finally, 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. If it is not clear whether the beta version is in actual use in commerce, the examining attorney should issue an information request under 37 C.F.R. §2.61(b), asking whether the version is in use in commerce. See TMEP §1301.03(a) regarding service mark specimens containing the term "beta."