Trademark “specimens”

Mere “advertisements” will be rejected!

Trademark “specimens” are required to prove “use in commerce”. Some website screenshots can work, but the recent In Re: Siny ruling shows that others may be rejected as “mere advertisements”.

Trademarks are very much a “use it” or “lose it” type of intellectual property. The US requires that before any trademark can issue, the owner must submit a “specimen” showing that the mark is actually being used in commerce. These specimens usually contain a JPEG (image) file with one or more examples of use in commerce.

Advertising doesn’t work: It is possible to just advertise something without actually selling it.  Thus “mere advertising” is not considered adequate proof. (For a funny example, look up “VIP“.)

Most trademark law predates the internet. However these days, much commerce is internet based “e-commerce.” Using webpages for proof can sometimes be problematic.  Webpages can be ambiguous.  Is the webpage for just advertising, e-commerce, both, neither? The old pre-internet rules are not always on point. So how does the USPTO decide what is and is not OK here?

The Federal Circuit, in the April 2019 In Re: Siny Corp. ruling, has clarified the situation somewhat. In this case, the Siny corporation filed for a trademark application. Their specimen was an image of a webpage. This webpage showed their product, along with a sales phone number and email address. So is this only advertising (reject), or mixed advertising and e-commerce (OK)?

The USPTO trademark examiner decided that this was “mere advertising”, and rejected the specimen. The examiner argued that just providing sales contact information, without more, wasn’t enough. His position was that additional sales information, such as “minimum quantity, cost, payment options or shipping information” was also needed.

Siny appealed to an intermediate USPTO PTAB board. The USPTO PTAB board agreed with the examiner. They further ruled that an adequate website specimen should show a website that functioned like a pre-internet “point of sale” display. Specifically, the website should give “enough” information to make a “purchasing decision”. They argued that the Siny specimen was deficient because: “if 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.”

What is “enough” here? The PTAB board used the examiner’s list of at least some of: “minimum quantity, cost, payment options or shipping information”. Siny had none of these.

Siny appealed again, this time to the Federal Circuit. The Federal Circuit was pretty cautious. They gave the usual disclaimers that “this is a factual question which must be determined on a case by case basis”, with no “rigid” “bright-line” rules. However, they also decided that they “cannot say that the PTAB board acted improperly”.  And this is what we have for legal guidance at present!

Take home lesson: If using webpage-based specimens, try to incorporate as many elements from the “minimum quantity, cost, payment options or shipping information” list as possible. Add still more elements if available. Not all elements may be needed, but better safe than sorry.