Wednesday, August 23, 2017

Divided TTAB Panel Rejects Website Specimen of Use for Fabric

A divided Board panel affirmed a refusal to register the mark CASALANA for "knit pile fabric made with wool for use as a textile in the manufacture of outerwear, gloves, apparel, and accessories," on the ground that applicant failed to submit a proper specimen of use. Applicant contended that its website qualified as a display associated with the goods, but the panel majority disagreed. In re Siny Corp., Serial No. 86754400 (August 17, 2017) [not precedential] (Majority opinion by Judge Anthony R. Masiello).

Applicant's webpage depicts the CASALANA mark adjacent one of eleven choices of fabrics, and it includes an explanation of the nature of applicant's goods. It also provides an informational link and, near the bottom of the webpage under the heading "For sales information" a phone number and an email address. The Board assumed that the phone number would connect a prospective customer with sales personnel.

The panel majority framed the question thusly: "whether the purported point of sale display provides the potential purchaser with the information normally associated with ordering products of that kind." In re Anpath Group, Inc. 95 USPQ2d 1377, 1381  (TTAB 2010).

The Board cited In re U.S. Tsubaki, Inc., 109 USPQ2d 2002 (TTAB 2014), for the proposition that "a simple invitation to call applicant to get information - even to get quotes for placing orders - does not provide a means for ordering the product." Only after obtaining such information could the purchaser place an order.

Here, the panel majority found it implausible that the business representative of a manufacturer would be prepared to place an order on the basis of the information on the specimen of use. "It would be impossible for a customer to make an informed decision to choose the CASALAN brand from among the other goods offered on the webpage." Moreover, there was no pricing information, or information regarding weight and thickness, or the minimum order size, or how a purchaser would pay, or how the goods would be shipped. The majority found it unlikely that customers would be prepared to buy the goods without inspecting a sample. In short, customers would need a great deal more information in order to make a purchasing decision.

The majority distinguished In re Valenite, Inc., 84 USPQ2d 1346 (TTAB 2007), where substantial technical information was provided at the website and where a telephone call was the final step in the purchasing process. There the applicant provided a verified statement that orders were indeed placed over the phone. [The majority noted that an applicant would be "well advised" to provide the Office with additional information on how purchases are actually made through a website].

Judge Angela Lykos dissented, urging that a more flexible approach be taken in light of the "increasing prevalence in the marketplace of direct-to-consumer e-commerce sites." In her view, sufficient information was provided, as well as a mechanism for placing an order. In this situation, one would expect prices to be negotiable depending on the quantity and quality of the fabric.

Read comments and post your comment here.

TTABlog comment: I agree with the dissent. Let's get real here.

Text Copyright John L. Welch 2017.


At 10:01 AM, Anonymous Anonymous said...

John, I agree with you and the dissent.

But is the TTAB just following the CAFC precedent? If so, somebody needs to appeal one of these nonsense specimen decisions to get a reversal. Or is this something that Congress needs to fix?

At 11:13 AM, Blogger Gene Bolmarcich, Esq. said...

Couldn't agree more. A consumer know sa trademark when she sees one. Why so technical? This serves no reasonable policy. It makes me laugh that they'll accept a bogus label with a mere statement that "this label is used on the supercomputers I sell" but for services they need to see a full account of the details of the service. Nothing about the specimen requirement makes ANY sense.

At 1:37 PM, Anonymous Anonymous said...

In reply to the last comment, the ID at issue was for goods not services. I wonder why the Applicant did not just amend the filing basis and create a new specimen (label or packaging). With that said, I agree with the dissent.


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