904.03(i)(B)(1) Prominence of Mark
When determining whether a web-page display specimen shows the mark in association with the identified goods, the examining attorney may consider the prominence of the mark. See In re Osterberg, 83 USPQ2d 1220, 1223 (TTAB 2007) ("Another factor in the analysis of whether a specimen is an acceptable display used in association with the goods is whether the mark is displayed in a such a way that the customer can easily associate the mark with the goods." (citing 83 USPQ2d 1220, 1223 (TTAB 2007) ("Another factor in the analysis of whether a specimen is an acceptable display used in association with the goods is whether the mark is displayed in a such a way that the customer can easily associate the mark with the goods." (citing In re Dell Inc., 71 USPQ2d 1725, 1728 (TTAB 2004) ).
The more prominently an applied-for mark appears on a web page, the more likely the mark will be perceived as a trademark. A mark may appear more prominent when the specimen:
- presents the mark in larger font size or different stylization or color than the surrounding text;
- places the mark at the beginning of a line or sentence;
- positions the mark next to a picture or description of the goods; or
- uses the "TM" designation with the applied-for mark (however, the designation alone does not transform a mark into a trademark if other considerations indicate it does not function as a trademark).
Compare In re Quantum Foods, Inc., 94 USPQ2d 1375, 1378 (TTAB 2010) (describing an applied-for mark as "prominently displayed" on the specimen when the mark appeared by itself above pictures relating to applicant’s goods in relatively large font and in a different color than some of the other text on the page), with In re Osterberg, 83 USPQ2d at 1223 (finding the applied-for mark not so prominently displayed that customers would easily associate the mark with the goods, because it was buried in the middle of text describing the goods and, while the mark was shown in bold font, so was other matter). See In re Sones, 590 F.3d 1282, 1289, 93 USPQ2d 1118, 1124 (Fed. Cir. 2009) ("Though not dispositive, the ‘use of the designation "TM"... lends a degree of visual prominence to the term.’" (quoting In re Dell Inc., 71 USPQ2d at 1729 )); In re Quantum Foods, Inc., 94 USPQ2d at 1378-79 (concluding that applicant’s specimen did not show use of the applied-for mark as a trademark for the goods, despite the mark’s "TM" designation); In re Osterberg, 83 USPQ2d 1220 at 1224, n.4 ("The mere use of a superscript ‘tm’ cannot transform a nontrademark term into a trademark." (citing In re Brass-Craft Mfg. Co., 49 USPQ2d 1849, 1853 (TTAB 1998) ).
These factors are not dispositive, and the web page as a whole must be assessed to determine whether the applied-for mark functions as a trademark for the identified goods. Alternatively, a mark may appear less prominent and less likely to be perceived as a trademark if it is:
- shown in the same font size, stylization, or color as the surrounding text;
- buried in a sentence; or
- encompassed within descriptive text such that the commercial impression of the mark is that of a descriptive term for the goods and not as a trademark.
See In re Osterberg, 83 USPQ2d at 1223.