Advertising Is Not Enough To Qualify As A Display Associated With Goods

In a recent decision issued by the U.S. Court of Appeals for the Federal Circuit (“CAFC”), the CAFC affirmed the Trademark Trial and Appeal Board’s decision (the “Board”) to refuse a specimen under the Lanham Act.  See In re Siny Corp., 2019 USPQ2d 11362 (Fed. Cir. 2019) [precedential].  The court stated that the specimen did not qualify as a display associated with the goods. The applicant had tried to register the mark CASALANA for “knit pile fabric made with wool for use as a textile in the manufacture of outerwear, gloves, apparel, and accessories”. The applicant argued that its specimen, images of its website should be acceptable as a point of sale display associated with the goods. The Examining Attorney objected because the specimen did not include a means for ordering the goods.

The image of the webpage showed the goods with the mark CASALANA, and an explanation of the goods. Near the bottom of the webpage it stated, “For sales information” and there was a telephone number and email address in close proximity inviting customers to call. The Board relied on the case of In re U.S. Tsubaki, Inc., 109 USPQ2d 2002 (TTAB 2014), for the rule that an invitation to call the applicant for additional information, including obtaining a quote for an order, does not provide a means for ordering the product. The rationale for this rule is that before acquiring this information via telephone, the customer did not have enough information to place an order.

Typically a display associated with the goods will contain information such as pricing details, order size, payment options, and information about shipping. If such information is provided, enough to allow the customer make a purchasing decision, along with contact information, it’s possible that a website could act as a display associated with the goods (assuming purchasers actually placed orders over the phone or through an email after viewing the information).  If all the important information to purchase the goods was acquired through another means other than the website, the website did not function as an example of use of the mark in commerce. See our webpage entitled, For Purposes Of Trademark Law, What Is Use In Commerce, for more information on this topic.

Whether a specimen is a point of sale display or mere advertising is a question of fact that must be determined on a case-by-case basis, by reviewing all the evidence of record. It also would have been helpful if the applicant produced verified statements from personnel stating that purchasers commonly used the telephone number provided on the webpage to obtain more information, and then to place orders for the goods. The CAFC reviewed the Board’s factual findings for substantial evidence, and the Board’s legal conclusions de novo. Substantial evidence means that there must be sufficient relevant evidence so that a reasonable minded person could accept the evidence to support a conclusion.

The Lanham Act requires that a trademark be in use in commerce to qualify for registration. Under the Lanham Act, if the application identifies goods, then the mark must appear on the goods, its container, packaging, tags, labels or the display associated with the goods. Here, the applicant could not show use of the mark in any of the acceptable manners. The Board and the court reasoned that if the alleged display associated with the goods does not contain the specific detailed information, a prospective customer will not have the information it needs to make a purchasing decision. Instead, the alleged display will merely act as advertising for the goods.

It should be noted that there was a split in the Board’s decision, and arguments were made that in light of the numerous e-commerce websites selling goods, there should be a broader approach considered. The dissenting opinion commented that the website did provide a method to place an order for the fabric. However, the CAFC concluded that the website was not a point of sale and thus, the image of the website was an unacceptable specimen for registration. Simply put mere advertising does not qualify as technical trademark use for goods. If you have questions concerning a trademark application or other related trademark questions, please contact the firm for a courtesy consultation.