In the case of In Re: SINY Corp., 2018-1077 (Fed. Cir. 2019) (full opinion available here), the Federal Circuit affirmed the Trademark Trial and Appeal Board’s decision that a Webpage Specimen must do more than merely advertise to be an acceptable display associated with the goods.
Siny Corp. filed a trademark application for CASALANA for knit pile fabric made with wool for use as a textile in the manufacture of outerwear, gloves, apparel, and accessories. Siny submitted a specimen consisting of a webpage printout. The Examining Attorney refused the registration because the specimen appeared to be mere advertising material and did not include a means for ordering the goods. Siny submitted a substitute specimen, which was a Webpage Specimen that included “[f]or sales information…” with a phone number and email address. The Examining Attorney rejected the substitute specimen in a final refusal finding that the text alone was insufficient for consumers to make a purchase and the specimen failed to include ordering information such as minimum quantities, cost, payment options, or shipping information.
Siny appealed to the Trademark Trial and Appeal Board (“Board”) and the Board affirmed the refusal. The Board found that the Webpage was a “display associated with the goods” within the meaning of the Lanham Act and as such it must be a “point of sale” display and not mere advertising. The Webpage lacked information that would be essential to a purchasing decision (price, minimum quantities, methods of payment, shipping). The Board appreciated that the goods were industrial materials for use by customers in manufacture, however, if all important aspects must be worked out by phone, the web page is not a point of sale. In such cases, the Board noted that the applicant would be well advised to provide the examining attorney with additional evidence and information regarding the manner in which purchases are actually made through the webpage.
The Federal Circuit agreed with the Examiner and the Board. Under the Lanham Act, a mark is deemed in use in commerce on goods when it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto. The issue was whether the Webpage specimen qualifies as a display associated with the goods under the Lanham Act. An important consideration is whether the display is at a point-of-sale location. The Federal Circuit found that the Board carefully considered the Webpage specimen’s contents and determined that the specimen did not cross the line from mere advertising to an acceptable display associated with the goods.