Websites today commonly promote sales of products; trademarks are used to identify their source.
So, one would think that use of a trademark on a website promoting a company’s products would qualify as a basis to acquire trademark rights and a trademark registration.
But a recent Federal Circuit decision, In Re Siny Corp. (Fed. Cir. 2019), affirmed refusal of a registration because the specimen, a website page that featured the goods with the trademark, did not contain sufficient information to render it a “point of sale” use of the trademark.
Companies that use websites and trademarks to promote their products should consider how to conform them to the minimum legal requirements for what is known as “technical trademark use,” or consider whether to make other uses of the trademark that qualify for registration.
Siny Corp., a fabric manufacturer, filed an application to register the mark CASALANA for a certain type of wool fabric used in the manufacture of various types of apparel and accessories.
It submitted a specimen (required to evidence use of the mark with the goods) that was an excerpt from its website showing the fabric, along with the phrase “[f]or sales information” followed by a phone number and email address.
The Lanham Act requires that an applicant for registration make a “use in commerce,” 15 U.S.C. § 1051(a)(1), which is defined for goods as “placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto.”
The website specimen was not an example of placement of the mark on the goods or their containers or tags or labels. So, it could only qualify as a “display associated therewith.”
However, long-standing Trademark Office decisions require that the “display” be one at the point of sale, not mere advertising.
Although the website did provide a means to contact the company and inquire about sales, it lacked basic information such as a price or range of prices for the goods, the minimum quantities one may order, accepted methods of payment, or how the goods would be shipped. Since “virtually all important aspects of the transaction must be determined from information extraneous to the web page, then the web page is not a point of sale.”
Siny also failed to provide any evidence as to how sales were negotiated once someone contacted it through the phone number or web page.
So, what options would a company like Siny have? One option would be to include more information on the website to attempt make it more of a “point of sale.”
Another option would be to affix the mark to a label attached to the goods or containers (for example, wrappings on a bolt of fabric.)
Another option, apparently not considered by Siny, is another way to show use. The Lanham Act provides as an additional option to show use in commerce: “if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale.” If the nature of the wholesale fabric business somehow made affixing the trademark to the fabric (or containers or tags) impracticable, then Siny might have made use of this provision.
Of course, “[a] mere assertion of impracticability does not suffice to establish that traditional trademark use is impracticable. Rather, the record must indicate that the goods are, in fact, of such a nature.” TMEP § 904.03(k). So Siny would have to submit evidence explaining that impracticality.