The Lanham Act provides for registration of a mark based on use of the mark in commerce. 15 U.S.C. § 1051(a). A mark is deemed in use in commerce on goods when, inter alia, “it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto.” Id. § 1127 (emphasis added).
Siny submitted a specimen of use consisting of a webpage printout, arguing that the specimen included a means to purchase the goods: namely, the phrase “For sales information:” followed by a phone number and email address. The examining attorney rejected that argument, maintaining that the phrase was by itself insufficient to allow consumers to make a purchase; rather, the phrase indicated only how consumers could obtain more information necessary to make a purchase. He noted the absence of necessary ordering information, such as minimum quantities, cost, payment options, and shipping information.
On appeal to the Board, Siny contended that its webpage specimen constituted a “display associated with the goods.” The Board “appreciated Siny’s contention that because the goods were industrial materials for use by customers in manufacture, the ultimate sales transaction may have to involve some assistance from Siny’s sales personnel.” Nonetheless it found that although some details are left to be worked out by telephone, virtually all important aspects of the transaction must be derived from information not available on the web page. Therefore, the Board found that the tweb page is not a point of sale display.
The CAFC observed that whether a specimen qualifies as a display associated with the goods is a factual question, subject to review under the “substantial evidence” standard.
The Board noted the absence of information it considered to be essential to a purchasing decision, such as a price or range of prices for the goods, the minimum quantities one may order, accepted methods of payment, or how the goods would be shipped. The Board also considered the “For sales information:” text and phone number contact. It assumed that the phone number would connect a prospective customer to sales personnel, but it found that “if virtually all important aspects of the transaction must be determined from information extraneous to the web page, then the web page is not a point of sale.”
Siny’s main argument on this appeal was that the Board applied “overly rigid requirements” in determining that Siny’s website specimen did not qualify as a display associated with the goods. Siny correctly observed that the CAFC has cautioned against bright-line rules in this context. See In re Sones, 590 F.3d at 1288–89 (holding that “a picture is not a mandatory requirement for a website-based specimen of use” and disapproving of the “rigid, bright-line rule” the PTO applied).
However, the CAFC disagreed with Siny’s contention that the Board applied improperly rigid requirements. “Rather, the Board carefully considered the Webpage Specimen’s contents and determined, on the record before it, that the specimen did not cross the line from mere advertising to an acceptable display associated with the goods.”
Unable to find that the Board’s decision lacked substantial evidence, the court affirmed the decision.
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TTABlog comment: Although the Board’s split decision may not have been improperly rigid, there are those who think more flexibility should be allowed in this Internet Age. See the dissent of Judge Angela Lykos in the Board’s opinion. It seems to me that purchasers of the goods involved here are relatively sophisticated buyers who do not expect to make a purchase based merely on some information on a webpage.
Text Copyright John L. Welch 2019.