Website Printout: Acceptable Specimen Of Use Or Advertising?
Addressing whether a webpage printout showed use of a mark in commerce, the US Court of Appeals for the Federal Circuit upheld the Trademark Trial and Appeal Board’s (TTAB’s) decision denying registration of the mark and finding that the printout was only advertising. In re Siny Corp., Case No. 18-1077 (Fed. Cir. Apr. 10, 2019) (Prost, CJ).
In 2015, Siny Corporation filed a use-based trademark application for the mark CASALANA for use in connection with a knit pile fabric made with wool used to manufacture outerwear, gloves, apparel and accessories. Siny submitted as a specimen of use a printout from its website, which showed a picture of red fabric with the mark CASALANA underneath it. The examining attorney noted that there was no way to purchase the fabric shown on the website in the printout. As a result, the specimen did not show use of the mark in commerce and was simply advertising.
Siny submitted a substitute webpage printout (reproduced in part below), which was similar to the original but also included the text “For sales information:” followed by a phone number and email address. Siny argued that the additional text on the substitute webpage printout showed use in commerce because it included a way to purchase the fabric.
The examining attorney rejected the substitute webpage printout, stating that it provided customers with a way to obtain information about purchasing CASALANA fabric, but not a way to actually order or buy the fabric. In particular, the examining attorney noted that the webpage did not contain the information normally needed to purchase a product—i.e., pricing, minimum quantities, or payment and shipping options. As a result, the examining attorney determined that the substitute webpage printout was only advertising, and issued a final rejection of the application. Siny appealed to the TTAB.
On appeal, Siny argued that the webpage specimen was a “display associated with goods” and therefore showed use of the CASALANA mark in commerce under Section 1(a) of the Trademark Act. The TTAB had noted that relevant precedent required such a display to be a “point of sale” display, not simply advertising, and concluded that the webpage specimen did not qualify as a “point of sale” display because it failed to provide the necessary information (identified by the examining attorney) to purchase the fabric. Siny further argued that its fabrics were industrial materials sold to manufacturers, so its sales representatives would likely need to be involved in all sales transactions. Although the TTAB appreciated Siny’s argument, it explained that “while [in the context of industrial goods, it is acceptable that] some details must be worked out by telephone, if virtually all important aspects of the transaction must be determined from information extraneous to the web page, the web page is not a point of sale.” The TTAB affirmed the examining attorney’s refusal to register the CASALANA mark. Siny appealed to the Federal Circuit.
On appeal, Siny argued that the TTAB used “overly rigid requirements” when it decided whether the webpage printout was a display of goods. The Federal Circuit rejected the argument, finding that the TTAB carefully considered the webpage printout and properly determined that it was advertising and not a “display associated with goods” showing use of the CASALANA mark in commerce.
Practice Note: Website printouts are acceptable specimens of use for goods as long as the printout provides the customer with sufficient information to purchase the goods.