TMEP 904.03(i)(B): Show the Mark in Association with the Goods

This is the October 2015 Edition of the TMEP

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904.03(i)(B)    Show the Mark in Association with the Goods

A web-page display specimen “must in some way evince that the mark is ‘associated’ with the goods and serves as an indicator of source.” In re Sones, 590 F.3d 1282, 1288, 93 USPQ2d 1118, 1123 (Fed. Cir. 2009). Assessing the “mark-goods” association on a web page involves many variables, including the prominence and placement of the mark, the content and layout of the web page, and the overall impression the web page creates. Web-page content and layout may sometimes distract consumers and prevent them from making the necessary connection between the mark and the identified goods. In re Azteca Sys., Inc., 102 USPQ2d 1955, 1958 (TTAB 2012). Factors such as the proximity of the mark to the goods, the presence of other marks, intervening text between the mark and the goods, and the inclusion of other material that is unrelated or marginally related to the identified goods, tend to disrupt purchasers from making the mark-goods association, as shown in Example 2. Id.

Description: Screenshot of webpage displaying information about Cityworks.

Example 2: Applied-for mark is not associated with the goods.

Mark: GIS EMPOWERED BY CITYWORKS

Goods: Computer software for management of public works and utilities assets

  • The applied-for mark is distant from the description of the software, and is separated from the description by more than fifteen lines of text concerning marginally related topics;
  • Due to the appearance of a number of other marks on the web page, it is unclear whether any particular mark is associated and used in connection with the identified goods;
  • The left sidebar includes links to articles and news about applicant’s business and is not limited to the software goods.

The following features of a specimen particularly influence the mark-goods association analysis.