904.03(i) Electronic Displays
A web page that displays a product can constitute a "display associated with the goods" if it:
- (1) contains a picture or textual description of the identified goods;
- (2) shows the mark in association with the goods; and
- (3) provides a means for ordering the identified goods.
See In re Sones, 590 F.3d 1282, 1288, 93 USPQ2d 1118, 1123 (Fed Cir. 2009); In re Azteca Sys., Inc., 102 USPQ2d 1955, 1957-58 (TTAB 2012); In re Dell Inc., 71 USPQ2d 1725, 1727 (TTAB 2004); Lands’ End v. Manbeck, 797 F. Supp. 511, 514, 24 USPQ2d 1314, 1316 (E.D. Va. 1992).
The mark must also be displayed on the web page in a manner in which customers will recognize it as a mark. See In re Morganroth, 208 USPQ 284, 287-88 (TTAB 1980); see also In re Osterberg, 83 USPQ2d 1220, 1223 (TTAB 2007) (finding that CONDOMTOY CONDOM was not displayed so prominently on web page specimen that consumers would recognize it as a trademark for condoms). See TMEP §1202.04 regarding matter that is merely informational in nature.
Generally, a web page will display the trademark in association with a picture of the goods. However, in Sones, the Federal Circuit held that although a visual depiction of the goods "is an important consideration in determining whether a submitted specimen sufficiently associates a mark with the source of the goods," a picture of the goods on the web page is not mandatory. In re Sones at 1288, 93 USPQ2d at 1123. A textual description may suffice where "the actual features or inherent characteristics of the goods are recognizable from the textual description, given that the more standard the product is, the less comprehensive the textual description need be." Id. at 1289, 93 USPQ2d at 1124.
An applicant need not describe a web-page specimen as a "display" for it to qualify as an acceptable display specimen, nor must the web page come from an applicant’s own website. A web page from a third-party website may be acceptable as a display if the mark is sufficiently associated with the applicant’s goods. See In re Osterberg, 83 USPQ2d at1221, 1223-24 (finding the specimen unacceptable not because it was a web page from a third-party website, but because it neither showed the mark in association with the goods nor provided a means for ordering the goods). For instance, a manufacturer of bed linens may rely on a third-party retail vendor’s web page when the web page shows a picture of the bed linens in association with the mark and provides a means for ordering them, as shown in Example 1.
Example 1: Mark is associated with the goods, goods are pictured and described, and ordering information is provided.
Goods: Coverlets, duvet covers, duvets, bed blankets, bed linen, bed sheets, pillow cases, bath linen, washing mitts
- The mark is placed below the website navigation tabs and is prominently displayed.
- The mark is physically close to the goods and is repeated in the links located under each product, indicating a direct association with the goods.
- No other marks appear to be used in connection with the goods apart from the alligator design and the product style names, all of which are associated with the goods.
- Product information is provided in the form of pictures and descriptions of the goods along with prices.
- There is a "shopping bag" at the top of the web page to enable direct ordering.
- Even if the web page did not include the larger LACOSTE mark, the LACOSTE marks depicted under the photographs of the goods (e.g., Lacoste "Brighton" Comforter Set or Lacoste "Confetti" Comforter Set) would be acceptable to show trademark use for the goods.
- If the proposed mark were "Macy’s" (as it appears in the upper-left corner), the web page would not be acceptable for goods because of the closer proximity and association of the other marks with the goods (i.e., the LACOSTE and alligator).
Similarly, a web page from a third–party, social-media website may also be accepted provided the web page satisfies the elements of a display specimen.
However, while a web page display associated with the goods is an acceptable specimen for goods, mere advertising material is not. In re Anpath Grp., 95 USPQ2d 1377, 1380 (TTAB 2010); In re Quantum Foods, Inc., 94 USPQ2d 1375, 1379 (TTAB 2010); In re Osterberg, 83 USPQ2d at 1224; In re Dell Inc., 71 USPQ2d at 1727; In re MediaShare Corp., 43 USPQ2d 1304, 1307 (TTAB 1997). Acceptable web-page displays are not merely advertising, but instead serve as point-of-sale displays, because the website on which the web page appears is, in effect, an electronic retail store, and the web page is a shelf-talker or banner which encourages the consumer to buy the product and provides the information necessary to do so. A consumer using the link on the web page to purchase the goods is the equivalent of a consumer seeing a shelf-talker and taking the item to the cashier in a store to purchase it. See In re Dell Inc., 71 USPQ2d at 1727. The web page is, thus, a point-of-sale display by which an actual sale is made.
A point-of-sale display is "‘calculated to consummate a sale’"; that is, it includes the information necessary for the consumer to decide to purchase the goods, and it appears in a setting that allows the consumer to immediately buy the goods. In re Quantum Foods, Inc., 94 USPQ2d at 1379 (quoting In re Bright of Am., Inc., 205 USPQ 63, 71 (TTAB 1979) ); In re Anpath Grp., 95 USPQ2d at 1382; In re MediaShare Corp., 43 USPQ2d at 1305; Lands’ End Inc., 797 F. Supp. at 514, 24 USPQ2d at 1316. An advertisement, however, merely describes or touts the benefits of the goods, influences people to buy them, or informs the public about the goods and the company that provides them. In re Anpath Grp., 95 USPQ2d at 1381-82; In re Quantum Foods, Inc., 94 USPQ2d at 1379. It does not offer a way to directly purchase the goods, because it either does not contain an offer to accept orders for the goods or does not provide special instructions for placing orders for the goods. In re Quantum Foods, Inc., 94 USPQ2d at 1380; In re Osterberg, 83 USPQ2d at 1224.
Therefore, a web page that merely provides information about the goods, but does not provide a means of ordering them, is viewed as promotional material, which is not acceptable to show trademark use on goods. See In re Genitope Corp., 78 USPQ2d 1819, 1822 (TTAB 2006) ("[T]he company name, address and phone number that appears at the end of the web page indicates only location information about applicant; it does not constitute a means to order goods through the mail or by telephone, in the way that a catalog sales form provides a means for one to fill out a sales form or call in a purchase by phone."). Merely providing a link to the websites of online distributors is not sufficient. There must be a means of ordering the goods directly from the applicant’s web page, such as a telephone number for placing orders or an online ordering process. In re Quantum Foods, Inc., 94 USPQ2d at 1380; In re Osterberg, 83 USPQ2d at 1224.
When a web-page specimen appears to be merely advertising, statements by the applicant that the specimen is used in connection with the sale of the goods, without evidence or a detailed explanation of the manner of use, will not suffice to establish that the specimen is a display associated with the goods. In re Osterberg, 83 USPQ2d at 1224 (finding that applicant’s mere statement in a signed declaration that copies of the web page were distributed at sales presentation lacked sufficient detail to transform the web page from an advertisement into a display associated with the goods).
Whether a web-page display qualifies as an acceptable specimen is a question of fact, based on the evidence of record. In re Azteca Sys., Inc., 102 USPQ2d at 1957 (citing Lands’ End, 797 F. Supp. at 514, 24 USPQ2d at 1316); In re Hydron Techs. Inc., 51 USPQ2d 1531, 1533 (TTAB 1999). The presentation on the web page of the picture or description of the goods, the manner of the mark’s use in association with those goods, and the nature of the ordering information affect the specimen’s acceptability. Thus, a specimen that describes or displays a picture of the goods, shows the mark, and provides ordering information may nonetheless be unacceptable because it fails to demonstrate an association between the mark and the goods. Sometimes, a single fact or piece of evidence may be dispositive. Often, however, a combination of facts and evidence of record may be required to establish the acceptability of the specimen. If ordering information is not readily discernible from the submitted web page, the applicant may provide multiple, sequential web pages as part of the specimen to clarify the ordering process on the website.
See TMEP §904.03(i)(A)–(i)(C)(3) for further discussion of the various factors for assessing whether a web-page display is an acceptable specimen.