Precedential No. 46: Following Dell, TTAB Says Website Printouts Suffice as Trademark Specimens

In view of the "prevalence of online retailing" and the specialized nature of Applicant's products, the Board found Applicant's home webpage to constitute a "display associated with the goods" and therefore a proper specimen of use for the mark VALPRO for tools for power operated metal cutting machines. In re Valenite Inc., 84 USPQ2d 1346 (TTAB 2007) [precedential].

Reamer
Applicant Valenite relied on Lands' End Inc. v. Manbeck, 24 USPQ2d 1314 (E.D. Va. 1992) and In re Dell Inc., 71 USPQ2d 1725 (TTAB 2004) in arguing that the webpage is a display associated with the goods (Rule 2.56(b)(1)). The Examining Attorney maintained that the specimen of use failed to meet the criteria set forth in those cases because "the mark is not associated with the goods" and "sufficient ordering information" is lacking.

Specimen webpageClick on photo for larger picture
In Lands' End, a catalog page bearing a picture of a purse in association with the mark KETCH, and accompanied by ordering information, was found to be a display associated with the goods. In Dell, the Board held that a website page depicting a product and providing ordering information can constitute a display associated with the goods "as long as the mark appears on the webpage in a manner in which the mark is associated with the goods."

Here, the Board observed, the word VALPRO appears at the top middle of the webpage, to the right of a picture of some of Applicant's tools. A link to an online catalog is provided, along with a toll free number and web links to customer service, technical support, and Applicant's "Technical Resource Center." According to Applicant, purchase of the products "requires careful calculation and technical knowledge, so customers expect to purchase the goods by contacting Appellant's Customer Service Group."

The Board found that the webpage satisfies Lands' End and Dell because it (1) includes a picture of the goods; (2) shows the mark near enough to associate the mark with the goods; and (3) contains information necessary to order the goods.

"These are not products that can be ordered from a web page by clicking on an image of the product to add it to a shopping cart for checkout. *** Thus, the fact that the webpage does not allow a customer to click on a product to add it to a shopping cart or make specific mention under the customer service link or phone number that the customer 'click here' or 'call now" to place an order does not compel a different result in this case."

The Board noted in Dell that "a well-recognized fact of current commercial life [is] that many goods and services are offered for sale on-line, and that on-line sales make up a significant portion of trade." It found nothing in the record here "to suggest that this observation is any less apt three years after it was made."

And so the Board reversed the refusal to register.

TTABlog note: For a pair of cases in which the specimen of use did not pass the test, see the TTABlog postings here and here.

TTABlog query: Suppose a company distributes a brochure for its "specialized" product, which brochure includes the mark in close association with a picture of the product, and a telephone number whereby a customer may inquire about the product specifications and/or place an order. Is the brochure a proper trademark specimen, or is it mere advertising? For an answer, go here.

Text Copyright John L. Welch 2007.