Uniform Approach to USPTO Review of Specimens of Use: In re Sones
In re Sones: New Ruling Provides a Uniform Approach to U.S. Patent and Trademark Office (USPTO) Review of Specimens of Use When submitting a web page as a specimen for goods, the USPTO will no longer require a picture of the goods and instead, in the absence of a picture, will accept a written description of the goods for which registration of the mark is sought. As many of you know, U.S. law requires that a trademark applicant submit a specimen of use before a mark is allowed to register. The intent of the specimen is to show that the mark is used in association with the goods. This specimen must be submitted with the application or, in the case of an intent to use application, after the mark is allowed. Generally, for goods, this requires a label, tag, or container for the goods, or a display associated with the goods. Also acceptable have been catalogs, as well as electronic displays (i.e. on a web site). In order for an electronic display to be accepted, the USPTO in the past has required that the mark be used in association with a picture of the goods along with a means for purchasing the goods (for example, information on cost, and an on-line ordering and purchasing process, or a toll-free number.)
Last month, the U.S. Court of Appeals for the Federal Circuit clarified this requirement for a picture of the goods and allowed that, in the absence of a picture, a description of the goods would suffice. This overturns a standard used by the USPTO for over ten years, which required website and catalog specimens specifically to include a picture of the relevant goods to be considered acceptable. Trademark owners now have greater flexibility in proving use where the goods are sold on-line and make it all the more easier for applicants to get an acceptable specimen filed to support registration of a mark.
The Court of Appeals in In re Sones, ___ F.3d ___, ___ USPQ2d ___, No. 2009-1140, 2009 U.S. App. LEXIS 28198, at *11-13 (Fed. Cir. Dec. 23, 2009), held that there is no absolute requirement that an acceptable specimen show an actual picture of the goods, and that submissions by trademark owners of website or catalog pages that have a textual description of the goods may be perfectly acceptable to the USPTO during the application process to fulfill the statutory requirement to show use of the mark in connection with the claimed goods or services. In In re Sones, the applicant attempted to register the mark ONE NATION UNDER GOD in connection with charity bracelets, and submitted as a specimen of use a website printout that gave the name of the applicant, depicted the mark and a briefly worded description of the goods, and provided an opportunity to purchase the bracelets. Next to the description of the bracelets was a gray-shaded box that stated "photo not availble" [sic]. The USPTO Examiner and Appeal Board refused to accept this website printout as a proper specimen because it did not include a photograph of the goods, and based their determination on an interpretation of an earlier case, Lands' End, Inc. v. Manbeck, 797 F. Supp. 511 (E.D. Va. 1992). In Lands' End, the issue was whether catalog pages could suffice as proper specimens of use for trademarks as required by the Lanham Act, which states an applicant must show "use in commerce" by submitting evidence that the mark is "placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto." 1
The Lands' End court observed that the catalog pages in that case "include[d] a picture and a description of each item," however, it determined that because the catalog pages allowed a customer to make a decision to purchase by sending in an order form, the pages constituted a proper display associated with the goods.
Subsequently in 1997 the USPTO instructed its examiners "to accept any catalog or similar specimen as a display associated with the goods provided that (1) it includes a picture of the relevant goods, (2) it includes the mark sufficiently near the picture of the goods to associate the mark with the goods, and (3) it includes information necessary to order the goods." 2
Until now, the requirement to include a picture of the goods has been repeated in the several subsequent decisions but has not been specifically challenged. The court in In re Sones has now specifically removed that requirement and admonished the USPTO to consider the evidence as a whole, consistently looking for point-of-s al e access, accurate descriptions of the goods in some form, reference to the source of the goods, and other factors as required by statute no matter what form of specimen is submitted. Although this conclusion seems obvious now, for trademark owners, I n re Sones is a welcome clarification that the actual test for an acceptable website specimen, as with all specimens, is whether it shows that the mark is associated with the goods and serves as an indicator of source; there is no absolute requirement that an acceptable specimen show an actual picture of the goods.
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1 11 U.S.C. Section 1127.
2 See TMEP Section 904.03 (6th ed. Oct 12, 2009) as this test still appears in the latest version.
