Historically, specimens of use have been reviewed by Trademark Examiners when filed in support of a trademark application. The Trademark Act deems a mark in use in commerce when “[the mark] is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affi xed thereto, or if the nature of the goods make such placement impracticable, then on documents associated with goods or their sale.”1 The trademark rule defi nes acceptable specimens as follows: “A trademark specimen is a label, tag, or container for the goods, or a display associated with the goods.”2
Advertisements such as brochures, folders or mail order catalogs are not appropriate specimens for goods.3 Websites, including homepages or product pages, were formerly believed to constitute advertising materials and thus be improper specimens. In 2004, the Trademark Trial and Appeals Board found that many webpages provide means for ordering products and therefore constitute an adequate specimen of use.4 Examiners nevertheless maintained their practice of rejecting webpages as improper specimens.
On July 27, 2004, Valenite Inc. filed for the mark VALPRO for tools: namely, power-operated metal cutting machines . . . . The company’s homepage was submitted as a specimen of use. On the company’s webpages, the mark VALPRO was situated in the middle of the page, away from pictures of the tools. The webpage also contained a link to an on-line catalog, a service support line, customer service contacts and a technical resource center. Valenite Inc. argued that customer service staff may take orders over the phone and that web surfers can go to a webpage where orders may be placed. On July 31, 2007 the Trademark Trial and Appeal Board reversed the Trademark Examiner and accepted the webpage at www.valenite.com as a suitable specimen of use.5 The Board affi rmed that many goods and services are offered for sale on-line and that on-line sales make up a signifi cant portion of trade. The Board concluded that “Applicant’s website provides the prospective purchaser with suffi cient information that the customer can select a product and call customer service to confi rm the correctness of the selection and place an order.” Homepages or other webpages are now acceptable specimens of use for goods so long as customers can ultimately place an on-line order after browsing.