In a recent precedential opinion of the Trademark Trial and Appeal Board, the Board examined the state of the law as it relates to specimens submitted to show use of a mark that is the subject of a pending trademark application. Analogizing the on-line marketplace to a “brick and mortar” one, the Board concluded that for a specimen to sufficiently support the use of a trademark, it is important that the mark be shown at the point-of-purchase. Thus, where an Internet specimen showed the mark but did not provide a means by which consumers could order or purchase the product claimed in the application, the specimen was found to be unacceptable to support registration of the mark.
In re Quantum Foods, Inc. (T.T.A.B., April 15, 2010) involved an intent-to-use application to register the trademark “Providing Protein And Menu Solutions” for use in connection with various meats and fully cooked entrees containing meat. In connection with its Statement of Use, the Applicant submitted a screen shot which it described as an image “of a web page from applicant’s website.” The Examining Attorney rejected the specimen because although it showed the mark in conjunction with pictures of meat and meat entrees, “it failed to show the necessary ordering information or a web link for ordering the goods . . .”. According to the Examiner, the specimen was mere advertising material. Applicant unsuccessfully responded that the specimen was appropriate because when consumers visited the actual site and saw the “live” page corresponding to the specimen, they had the opportunity to click on a dropdown menu that contained a “Contact Us” link which, in turn, routed consumers to a customer service page wherein the consumer was provided with the e-mail address and telephone number of Applicant’s customer service department for, among other things, placing an order for the goods.
The Board, in affirming the refusal to register the mark for lack of an appropriate specimen of use, began by recognizing that online shopping is essentially an “electronic retail store”. Thus, “a consumer using a link on [a] web page to purchase . . . goods is the equivalent of a consumer seeing a shelftalker and taking the item to the cashier in a store to purchase it.” However, in the Internet context, a web page that does not permit the consumer to order the product is nothing more than promotional material for that product, and is thus is equivalent to mere advertising, which has long been recognized as insufficient to evidence use of a mark in commerce.
The problem with the specimen in Quantum was that it did not contain the information typically associated with ordering products via the Internet (or by telephone for that matter). The specimen showed no sales form, no pricing information, no offers to accept orders, and no special instructions for placing orders. Accordingly, the specimen did “not show an actual offer for sale of the goods identified in the application and the opportunity and means to complete an on-line purchase of any goods.” Essentially, the Board concluded that the specimen was little more than a way to advertise the goods and promote the company.
With respect to the “Contact Us” link -- putting aside the fact that the specimen submitted by the Applicant did not actually show the actual link, only a tab that could be clicked on to get to that link -- the Board was not persuaded that the access it provided to the Applicant’s customer service personnel was sufficient to evidence use of the mark in connection with the purchase decision. For example, it did not take the consumer to an order form. A consumer’s ability to access a “Contact us” link and resulting page was insufficient in the eyes of the Board to convert “ordinary advertising into a point-ofsale display associated with the goods.”
Under the decision in In Re Quantum, Internet uses of a trademark should be treated consistently with trademark uses in the more traditional retail manner: web page displays are essentially the same as point-of-sale displays in the physical world, and web page advertisements are the analogous to print ads. Thus, “if there is no way for a consumer, when visiting a web page, to order the goods being promoted, then the use of a proposed mark in connection with the goods on the web page is nothing more than advertising.” Accordingly, applicants considering appropriate Internet-derived specimens of use for submission in connection with a trademark application, should ensure that the specimen selected is not mere advertising such as an informational catalog page. The specimen submitted should ideally show, on its face, the means by which consumers can order or otherwise purchase the product(s) for which the application has been filed.