This article originally appeared in Journal of the Japanese Group "A.I.P.P.I.," vol. 50, No. 8, 2005.
In In Re Dell, Inc., 71 U.S.P.Q.2d 1725 (TTAB 2004), the Trademark Trial and Appeal Board ("TTAB") addressed the issue of whether a web site page submitted as a specimen showing actual trademark use of an Applicant's mark qualifies as a "display associated with the goods" within the meaning of 37 C.F.R. § 2.56 and 15 U.S.C. § 1127. The TTAB held that Dell's Web page submitted in connection with its application was a sufficient specimen of use, and laid out guidelines for when web page specimens are acceptable.
Trademark rights in the United States are based on use. Therefore, the applicant in a trademark or service mark application is required to submit a specimen showing use of the mark in commerce in connection with the goods or services listed in the application before the application will be allowed to register. The United States Patent and Trademark Office ("USPTO") closely examines specimens to determine whether or not the mark sought to be registered is in fact a mark and whether or not the applicant is actually using the mark in connection with the goods or services listed in the application.
An applicant must submit one specimen for each class of goods and/or services covered by the application. The applicant is not required to submit specimens for each product or service within a class. However, if the range of goods or services within a particular class is broad or includes unrelated goods or services, an examining attorney will frequently require that the applicant produce specimens showing use of the mark in connection with several different products or services within that class.
A specimen submitted as evidence of use of a mark must fulfill three basic requirements: i) it must show the mark as set forth in the application; ii) it must show an association between the mark and the goods or services listed in the application; and iii) it must show use of the mark in commerce.
II. Acceptable Specimens.
The USPTO has put forth detailed guidelines of what does and does not constitute an acceptable specimen. The types of acceptable specimens differ significantly for trademarks and service marks.
For a trademark (a mark used in connection with goods rather than services), appropriate specimens generally include labels and tags applied to the goods, packaging for the goods, and displays associated with the sale of the goods. The latter category primarily refers to point of sale displays, such as banners, window displays, shelf displays and similar devices which are intended to capture the attention of customers in a physical retail environment. However, the TTAB has expanded the range of acceptable specimens in recent years so that other specimens showing the mark in close proximity to the goods, such as catalogs and web site page printouts, are also acceptable specimens under certain circumstances.
The primary type of materials which are not acceptable specimens for a trademark is advertising material, such as newspaper advertisements, flyers, brochures, circulars, informational sheets, and price lists are also generally not acceptable trademark specimens. However, these types of specimens may be acceptable provided that they meet certain criteria, discussed below.
B. Service Marks
The rules are different in connection with service marks, since service marks are often not used in connection with physical goods. Unlike with trademarks, advertising material is usually an acceptable specimen for a service mark, provided that there is a clear association between the mark and the services. However, internal business materials, such as internal memoranda, invoices, business plans, and similar goods, are not appropriate service mark specimens. Company letterhead may be an appropriate specimen, but only if the letter bearing the letterhead is a letter offering or providing services to the recipient.
III. Catalog Specimens
The TTAB used to hold that catalogs were mere advertising and were not acceptable trademark specimens. However, the TTAB clarified this rule after the decision of the federal court in Land's End Inc. v. Manbeck, 797 F. Supp. 511, 24 U.S.P.Q.2d 1314 (E.D. Va. 1992). In Land's End, the applicant was a catalog and mail order retailer who sought to register KETCH for purses. As a specimen, the applicant submitted a page from the catalog showing the goods along with the mark and a description of the goods. The court held that this was an appropriate specimen because it displayed the mark in bold lettering next to the goods in a manner which closely associated the mark with the goods.
The TTAB now applies a three part test for determining whether a catalog specimen is an appropriate trademark specimen. The specimen must 1) include a picture of the relevant goods; 2) show the mark sufficiently close to the goods so that consumers will associate the mark with the goods; and 3) include the information necessary to order the goods (such as a phone number that can be called to place an order). These criteria apply to other types of advertising material as well, so that an informational flyer or similar specimen may be acceptable if it meets the relevant criteria. However, catalogs or other materials that do not meet these criteria will be deemed mere advertising materials and will not be acceptable as specimens.
IV. Internet Specimens: In re Dell, Inc.
Prior to the decision in Dell, the TTAB occasionally accepted web page specimens under the reasoning of Land's End. However, it was only with the decision in Dell that the TTAB set forth definitive criteria for determining whether or not a web page is an acceptable specimen.
Dell Computer Corporation applied to register QUIETCASE as a trademark for goods identified as “computer hardware; internal cases for computer hardware being parts of computer network stations.” The Examiner refused the application on the basis that Dell had failed to submit a specimen which evidenced actual trademark use.
The specimen submitted by Dell was a printout of a page taken from its web site which Dell asserted to be a display associated with the goods. The page provided the details for the "Dell Precision Workstation 530" computer system. The page featured a picture of the computer system along with the technical specifications. Near the bottom of the page, the list of technical specifications included the line "QuietCase™ acoustic environment provides easy access to system interior." The web page did not display any ordering information apart from a button with the phrase "Customize It," which consumers could click on to begin the ordering process.
The examining attorney stated that the specimen is mere advertising and did not qualify as a specimen for several reasons. First, the examining attorney argued that a single web page was not a catalog or an electronic catalog and was therefore not an appropriate specimen under Land's End. In addition, the examining attorney argued that even under Land's End, the web page would not be an appropriate specimen since the display of the QUIETCASE mark was not "prominent" and that several other words on the screen (such as the "Dell Precision Workstation 530" description) appeared in a larger font. In addition, the examining attorney stated that the mark was not displayed in close enough proximity to the goods since it was not next to the photograph of the computer system but was included in a list of bullet points at the bottom of the screen. Therefore, the examining attorney ruled that the web page was advertising material and followed the longstanding TTAB rule that specimens are invalid for registration purposes if they constitute mere advertising.
B. The TTAB Decision
On appeal, the Board reversed the examining attorney and held that following the reasoning of the Lands End decision, a web site page which 1) displays a product, and 2) provides a means of ordering the product can constitute a display associated with the goods, as long as 3) the mark appears on the web page in a manner in which the mark is associated with the goods.
The Board disagreed with the examining attorney's finding that Land's End did not cover web sites, since the reasoning in Land's End was not merely applicable to catalogs. The Board reasoned that in today's commercial environment, the Board must recognize that the banners, shelf-talkers and other point-of-purchase displays that are associated with brick and mortar stores are not feasible for the online shopping setting. Thus, the Board held that "[w]eb pages which display goods and their trademarks and provide for the online ordering of such goods are, in fact, electronic displays which are associated with the goods." Such uses are not merely advertising because in addition to showing the goods and the mark, they provide a link for ordering the goods. The Board reasoned that in effect the web site is an electronic retail store and the web page is analogous to a shelf-talker or banner which encourages the consumer to buy the product.
The Board also rejected the examining attorney's reasoning that Dell's web page would not be an appropriate specimen under Land's End. Although the examining attorney had argued that the trademark QUIETCASE does not appear next to the photograph of the goods, the Board pointed out that the subject work station is the only work product on the Web page. Therefore, the Board held that it is clear that this is the product to which the trademark QUIETCASE refers.
In addition, the examining attorney had stated that the mark QUIETCASE was shown in a smaller-type size than other words appearing on the Web page. The Board countered this argument by noting that as the specimen is a web page, it must be remembered that when it is actually viewed it fills the consumer's monitor screen. Therefore, the mark would appear larger than it did in the specimen contained in the file. The Board emphasized that the mark appears in a bullet listing of information about the product which is important to the purchasing decision and would be carefully perused by potential consumers. In its particular bullet, the mark appears at the beginning of a line and is followed by the TM trademark indicator which lends the mark QUIETCASE a degree of visual prominence even though the font size is not particularly large.
Finally, the Board determined that the last prong of the Land's End test – that the specimen include the information necessary to order the goods – was satisfied by the "Customize It" button on the web page. The Board concluded that in the context of Dell's customized computer systems, the "Customize It" button was no different than an "Add to Cart" button or shopping cart button on other online retail web sites.
In sum, the Board held that in the context of the specimen web page, the QUIETCASE was sufficiently prominent that consumers would recognize it as a trademark for the computer hardware shown on the web page. The Board thus established a future precedent for web page specimens under which a web site will be an appropriate specimen if it i) displays the goods; ii) displays the mark in proximity to the goods; and iii) provides a means of ordering the goods or the information necessary to order the goods.
The TTAB has now resolved the confusion that existed prior to Dell as to whether an Internet web page was an appropriate trademark specimen. The Dell holding is a particularly valuable case for companies that sell most or all of their goods online (such as Dell), since these companies may not always have traditional trademark specimens such as point-of-sale displays, packaging, or even catalogs. The TTAB's holding in Dell is also fairly broad, since it allows for a web page to be a trademark specimen even where the mark is not displayed right next to the goods and/or where the mark is not displayed in an overly prominent manner.
However, companies seeking to develop web pages to be used as trademark specimens will still have to follow the basic guidelines set forth by the TTAB. In particular, the web page must always display a photograph of the goods, not merely a description of the goods. Moreover, if the mark is not displayed right underneath or right next to the goods, it should be displayed in a place containing information critical to a consumer's purchasing decision (such as the list of technical specifications in Dell). For example, if the mark is displayed by itself in the upper right corner of the screen, away from the picture of the product or any accompanying information, the web site may not be an appropriate specimen. The mark should also be displayed so that consumers will view it as a trademark, whether this entails displaying the mark in a larger font than surrounding words or including the "™" designation after the mark. Finally, the web page must display a means for ordering the goods, such as an "Add to Cart" or "Buy It Now" button, a shopping cart icon, or a telephone number to call to order the goods.