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.