The U.S. Court of Appeals for the Federal Circuit recently reversed a Trademark Trial and Appeal Board (TTAB) decision requiring that webpage specimens of use must include a picture of the goods. In re Michael Sones, Case No. 09-1140 (Fed. Cir., Dec. 23, 2009) (Linn, J.; Newman, J., dissenting).

Sones filed an intent-to-use application for the mark ONE NATION UNDER GOD for charity bracelets. The application was allowed on August 15, 2006. With his Statement of Use, Sones submitted printouts from his website that contained a product listing, “ONE NATION UNDER GOD CHARITY BRACELET >> for $2.00” and the text “ONE NATION UNDER GOD CHARITY BRACELET, CHOICE OF BLUE OR RED $2.00 EACH.” The website also had a shopping cart function and included buttons labeled “Add to Cart” and “View Cart.” However, the listing did not display a picture of the goods.

The U.S. Patent and Trademark Office (USPTO) rejected Sones’s Statement of Use on the grounds that his specimen did not show a picture of the goods in close proximity to the mark. In response, Sones submitted rebuttal arguments but did not submit a replacement specimen. The examining attorney again cited the rule that a display is acceptable only if it includes a picture of the relevant goods and made the refusal final. The TTAB affirmed the refusal to register. Sones appealed.

The Federal Circuit reversed noting that neither Lands’ End v. Manbeck, the case upon which the USPTO rule was based, nor the Lanham Act require that specimens of use from the internet must always have pictures. The Court noted that in Lands’ End, the use of photograph of the goods in catalog was secondary in importance to the “point of sale nature of the display.” Therefore, contrary to the USPTO’s interpretation, Lands’ End did not establish a bright-line rule that displays must contain pictures of the goods.

As for the Lanham Act, the Court noted that under the act, bona fide use of a mark in the ordinary course of trade can be shown by placing a mark “in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto.” Accordingly, for displays, the mark must merely be “associated” with the goods.

The Federal Circuit also analogized website specimens to physical specimens of use, e.g., labels, containers or banners, for which no picture of the goods is required. For instance, a container must simply bear the mark and contain the goods to be an acceptable specimen of use. Therefore, the Court held that there was no reason why websites must have pictures in order to associate a trademark with the goods being sold.

In dissent, Judge Newman accused her colleagues of issuing an improper advisory opinion since the applicant had filed a new application for registration and filed in it a picture of the mark used in association with the goods. In Judge Newman’s view this mooted any “live controversy.”