TM: Web Page Advertisements Do not (Necessarily) Constitute Use in Commerce

In re Siny Corp. (Fed. Cir. 2019)

In January 2019, the Federal Circuit issued a non-precedential opinion in this trademark case.  Based upon a USPTO request, the court has now reissue the decision as precedential. See Fed. Cir. R. 32.1(e).

As part of the trademark registration process, an applicant must submit a specimen of the mark as used in commerce.  Here, Siny is seeking to register the mark CASALANA for its knit wool fabric and submitted a printout from a webpage purporting to show the mark being used in commerce.

The page did not allow direct ordering but simply listed a phone number and email “for sales information.” In addition, the mark was not shown on images of the fabric itself or its packaging but rather simply in the website text.  The examining attorney  and TTAB found the specimen insufficient to prove use in commerce.  Here, prior precedent indicates that a specimen using the mark on a “display associated with goods” is only sufficient if it is a “point of sale” display and not mere advertising.

On appeal, the Federal Circuit affirmed both on the law and the factual conclusions — holding that “the Board carefully considered the Webpage Specimen’s contents and determined, on the record before it, that the specimen did not cross the line from mere advertising to an acceptable display associated with the goods.”

[Read the PTO Request Letter: PTO Request to Re-designate Precedential]

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Siny could have likely fixed its problem a few ways.  (1) providing quantity/pricing information on the site; (2) providing e-commerce option; (3) providing evidence of its sales process — that consumers saw the website, called the number, and bought the goods; (4) putting the mark on the images of the goods for sale rather than the just the on the surrounding website; (5) it may have been enough to simply change the general “for sales information” statement to a more direct — “call to purchase, pricing available on request.”

5 thoughts on “TM: Web Page Advertisements Do not (Necessarily) Constitute Use in Commerce

  1. 3

    Guess I’ll go against the grain and wish examiners used a little more scrutiny on specimen photos.

    I’ve seen several that were clearly (i.e., poorly done) photoshopped to put the applicant’s brand onto another’s product.

  2. 2

    Some day I would like to understand the continuing purpose of the “mere advertising” doctrine.

    1. 2.1

      Correct me if I am wrong**, but trademarks do not carry the patent-equivalent of “offer for sale” as an “impact item.”

      In the trademark world, merely offering (or advertising without more) does not make the situation rise to the level of a transaction in commerce.

      That being said, the purpose of trademark law is plainly affected with this “mere” advertising, even more so than in the patent world, so the trademark world lacking this impact really is odd.

      ** trademarks are not my bailiwick.

    2. 2.2

      You and me both. This combined with the absurd level of scrutiny for specimens has made TM prosecution downright obnoxious.

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