Thursday, December 24, 2009

CAFC Reverses TTAB: Website Specimen of Use Need Not Include a Picture

The CAFC reversed a TTAB ruling [TTABlogged here] that rejected a website specimen of use that did not include a photograph of the subject product. The appellate court held that "a picture is not a mandatory requirement for a website-based specimen of use." It pointed out that the test for an acceptable website specimen, "just as any other specimen, is simply that it must in some way evince that the mark is 'associated' with the goods and serves as an indicator of source." In re Michael Sones, 93 USPQ2d 1118 (Fed. Cir. 2009) [precedential].

Applicant's specimen of use
(click on picture for larger image)

The TTAB based its bright-line rule on Lands' End, Inc. v. Manbeck, 797 F. Supp. 511 (E.D. Va. 1992), which dealt with a catalog specimen. The Board had carried over its interpretation of Lands' End to website specimens. The court, however, did not interpret Lands' End or the law of trademarks "to require that specimens of use from the Internet always have pictures." The trademark statute does not specify any particular requirements for a specimen of use. For displays, the mark "must simply be 'associated' with the goods."

The court observed that, for brick-and-mortar stores, "there is no rule that specimens of use must show pictures." A label or container bearing the mark may suffice. "Thus, a product box that bears the trademark, but does not display a picture of the goods or allow customers to see the goods, may be an acceptable specimen." Moreover, in several cases tangible specimens that described the goods "in sufficient detail in relation to the marks" but did not include a picture, were found sufficient. The court therefore saw no reason why website specimens "must necessarily have pictures to associate a trademark with the goods being sold."

Precedent such as Lands' End and Dell establishes that a visual depiction of a product is an important consideration in determining whether a submitted specimen sufficiently associates a mark with the source of the goods. It might well be that the absence of a picture will render website specimens ineffective in many cases and will be, as the PTO argues, "[a] crucial factor in the court's analysis." *** But a picture is not the only way to show an association between a mark and the goods, and we cannot approve of the rigid, bright-line rule that the PTO applied here.

The court remanded the case to the TTAB for consideration of the evidence as a whole "to determine if Sones' specimen sufficiently associates his mark with his charity bracelets so as to 'identify and distinguish the goods.'"

Relevant factors include, for example, whether Sones’ webpages have a “point of sale nature,” Lands’ End, 797 F. Supp. at 514, and whether 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. See McCarthy § 19:48 (“The applicant’s identification of goods . . . should identify the goods by their common, ordinary name so that the average person would recognize what they are.”). The term “charity bracelet” is listed in the PTO’s Acceptable Identification of Goods and Services Manual under Class Code 014. See TMEP § 1402.04 (describing the Manual as “a listing of acceptable identifications of goods and services . . . that are acceptable in the [PTO] without further inquiry” for application purposes). Though not dispositive, the “use of the designation ‘TM’ . . . lends a degree of visual prominence to the term.” Dell, 71 USPQ2d at 1729. These and other factors will help determine whether Sones’ mark “signifies the source and quality of the goods.” Int’l Flavors, 183 F.3d at 1366.

Judge Newman, in dissent, noted that Applicant Sones had subsequently filed a use-based application for his mark ONE NATION UNDER GOD, and had provided a picture of the mark in association with the goods. That action, opined Judge Newman, has rendered the appeal concerning his first application moot (despite the resulting loss of Applicant's original priority date).

Applicant's later specimen of use

TTABlog comment: I'll bet the TTAB, on remand, accepts the non-picture-containing specimen of use. What do you think?

Text Copyright John L. Welch 2009.


At 12:45 PM, Anonymous Orrin A. Falby said...

It is surprising to me that the TTAB sustained this refusal. The TTAB has held in the past that a picture in close proximity to the mark is not a requirement. See Mobilogic, v. Netcore Technology, Inc., 1999 WL 651582 (T.T.A.B. 1999)forth in Section 45 of the Lanham Act and serves as a “display associated with the goods”. Here is a snippet of my standard argument on this issue: The Lands’ End decision does not hold that, in order for a catalog or similar specimen to serve
as a display associated with the goods, it must include an actual photograph of the goods. In fact, the Lands’ End Court specifically recognized and stated that, ‘[t]he trademark statute does not require that the mark be affixed or have “close physical association” to the goods. The terms of the statute are met if the mark is placed in any manner on a “display associated with the goods”’. Lands End at 513(citing, In re Mariott, 459 F.2d 525, 526 (C.C.P.A 1972). “A crucial factor in the analysis is if the use of an alleged mark is at a point of sale location. A point of sale location provides a customer with the
opportunity to look at the displayed mark as a means of identifying and distinguishing the source of the goods.” Lands’ End at 514, citing In re Shipley Co., 230 U.S.P.Q. at 690 (T.T.A.B. 1986).

At 10:57 AM, Anonymous Anonymous said...

The examiner would not be able to determine whether or not the mark is merely ornamental as used on the goods without a picture. That would seem to be a more practical reason for requiring a picture of the goods.


Post a Comment

<< Home