Holding that a portion of the Trademark Manual of Examining Procedure (“TMEP”) is merely “instructive,” the U.S. Court of Appeals for the Federal Circuit threw out what had long been an established rule for website-based specimens of use. It is now no longer a requirement for a web-based specimen of use to include a picture of the goods. According to the Federal Circuit in In re Sones 93 USPQ.2d 1118 (Fed. Cir. Dec. 23, 2009), the true test for an Internet 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.”

Background

Michael Sones appealed from a Trademark Trial and Appeal Board (“TTAB”) decision denying his application to register the mark “One Nation Under God” for charity bracelets. In 2007, the PTO rejected his statement of use because it did not “show a picture of the goods in close proximity to the mark.” Sones did not correct the omission because, according to the Federal Circuit, he apparently did not have a specimen of use prior to when he filed his statement of use, as is required by 37 C.F.R. §259(b)(2). In a later office action, the PTO affirmed the rejection, and Sones appealed to the TTAB.

The Board relied upon Land’s End, Inc. v. Manbeck, 797 F.Supp. 511 (24 USPQ.2d 1314) (E.D. Va., 1992), and applied a three-part test intended for catalog specimens to website specimens. In Land’s End, a company submitted as its specimen a page from a catalog that showed a photo of a purse, a verbal description, and the proposed trademark “KETCH.” After rejecting the specimen, the PTO said that examining attorneys “should accept any catalog or similar specimen as a display associated with the goods, provided: (1) it includes a picture of the relevant goods, (2) it includes the mark sufficiently near the picture of the goods to associate the mark with the goods, and (3) it includes information necessary to order the goods.” The TMEP now includes this test in its section for catalogs, but the PTO has applied it to electronic specimens of use as well. (Note: the applicant in Land’s End later filed a civil action in district court. That court emphasized the proximity in the catalog of the picture with the proposed mark and description—and the fact that the customer could fill out an attached sales form to order the product—and found it to be a sufficient display.)

Sones’s website specimen did not contain a photo of the bracelets, but rather the following description: “One Nation Under God TM Charity Bracelet, choice of blue or red, $2.00 each.” Underneath the description, the customer could select a color and click the “add to cart” button to purchase directly from the site. According to the Federal Circuit, the Board erroneously followed the Land’s End rule as if it were a bright-line rule when it held that Sones’s “web catalog does not show a picture of the goods in close proximity of the mark. In fact, the specimen does not show a picture of the mark at all.” Thus, the Board found the specimen “unacceptable” for failing to show use of the goods in commerce.

Federal Circuit Decision

In Sones’s appeal to the Federal Circuit, the court found error in the Board’s line of reasoning as well as its conclusion. First, the court explained that the Board’s reliance on the Land’s End test was misplaced. The Virginia court in Land’s End considered an additional factor—not just three-part test—seemingly ignored by the Board in Sones: “a crucial factor in the analysis is if the use of an alleged mark is at a point of sale location.” A website page that displays a product and allows customers to order directly from the page can qualify as 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,” as the Board found in In re Dell, Inc., 71 USPQ.2d 1725 (TTAB 2004).

Second, the court stated that “the Board’s bright-line rule has no basis in trademark statute or policy.” The Lanham Act simply requires that the mark be placed on the goods, their containers, or displays, or on affixed labels or tags. The Federal Circuit in Sones found that the point-of-sale nature of Sones’s webpage specimen adequately “associated” the mark with the goods for sale on the webpage.

Finally, the court questioned the application to websites of a rule intended for catalogs. The TMEP has two separate sections (albeit sequentially) for these distinct categories. The section for “electronic displays” states: “A website page that displays a product, and provides a means of ordering the product, can constitute a ‘display associated with the goods,’ as long as the mark appears on the web page in a manner in which the mark is associated with the goods, and the web page provides a means for ordering the goods” (TMEP §904.03(i)). Based on these three arguments, the Federal Circuit court concluded that “a picture is not a mandatory requirement for a website-based specimen of use,” and such a specimen must “in some way evince that the mark is ‘associated’ with the goods and serve[] as an indicator of source.”

The New Standard

The Federal Circuit remanded In re Sones to the PTO to consider the evidence as a whole to determine whether Sones’s website specimen sufficiently associates his mark with the charity bracelets. The court again highlighted the importance of considering the point-of-sale nature of the web-based specimen. It also instructed the PTO to consider “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.” Additionally, the fact that the term “charity bracelet” appears in the PTO’s Acceptable Identification of Goods and Services Manual, and the “use of the designation ‘TM’” should help the PTO determine whether Sones’s specimen adequately identifies and distinguishes the goods.

Practical Implications

When submitting a specimen to show actual use associated with the goods in the Internet setting, it is no longer a strict requirement for the applicant to include a photograph of the goods with the mark affixed. On remand, it remains to be seen where a verbal description of the goods and the mark placed near an “add to cart” order button will qualify as a sufficient specimen of use. All indications are that the PTO will conclude that such a specimen of use is acceptable. Some clues emerge to help predict the direction of future cases. These include the court’s emphasis on mere “association” as the relevant inquiry, and the court’s explicit statement that a photograph is not mandatory for all website specimens of use.