U.S. Court of Appeals for the Federal Circuit, In Re: Siny Corp., Docket No. 2018-1077

Trademark

Registration

Use in Commerce

Display Associated with the Goods

Webpage Printout

Substantial Evidence

Siny Corp. (“Siny”) appeals a decision of the Trademark Trial and Appeal Board (“Board”) affirming the examining attorney’s refusal to register Siny’s proposed mark. We affirm.

Siny filed trademark application Serial No. 86754400 on September 11, 2015, seeking to register the mark CASALANA in standard characters for “Knit pile fabric made with wool for use as a textile in the manufacture of outerwear, gloves, apparel, and accessories” based on use in commerce under Section 1(a) of the Lanham Act, 15 U.S.C. § 1051(a). Siny also submitted a specimen consisting of a webpage printout, which purported to show the mark in use in commerce for the goods.

The examining attorney initially refused registration because the specimen “appeared to be mere advertising material” and thus failed to show the requisite use in commerce for the goods. J.A. 74. The examining attorney noted in particular that the specimen did not include a means for ordering the goods.

(…) The examining attorney rejected (…) argument in a final refusal. He found that the cited text alone was insufficient for consumers to make a purchase; rather, it only indicated how consumers could obtain more information necessary to make a purchase. The examining attorney noted the absence of what he considered necessary ordering information, such as minimum quantities, cost, payment options, or shipping information. He therefore maintained the refusal based on the submitted specimen’s failure to show the requisite use in commerce for the goods.

Siny appealed the refusal to the Board. In a split decision, the Board affirmed. The Board initially noted that for a mark to be in use in commerce on goods, it may be “placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto.” J.A. 2 (quoting 15 U.S.C. § 1127). The Board observed that the Webpage Specimen was not an example of the mark being placed on the goods or their containers, tags, or labels. Rather, Siny contended that the Webpage Specimen constituted a “display associated with the goods.”

The Board then considered the Webpage Specimen in detail. It found that the Webpage Specimen lacked much of the information the Board would consider essential to a purchasing decision—e.g., a price (or even a range of prices) for the goods, the minimum quantities one may order, accepted methods of payment, or how the goods would be shipped. J.A. 8. The Board appreciated Siny’s contention that because the goods were industrial materials for use by customers in manufacture, the ultimate sales transaction may have to involve some assistance from Siny’s sales personnel. J.A. 9; see J.A. 3. Yet it found that, “while 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, then the web page is not a point of sale.” J.A. 9.

The Board added that in cases where the goods are technical and specialized and the applicant and examining attorney disagree on the point-of-sale nature of a submitted webpage specimen, “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.” J.A. 9 (noting further that “attorney argument is not a substitute for reliable documentation of how sales actually are made . . . and verified statements from knowledgeable personnel as to what happens and how”). The Board ultimately affirmed the refusal because it found that the Webpage Specimen was not a display associated with the goods within the meaning of the Lanham Act. J.A. 10. The dissenter found that the Webpage Specimen was a valid “point of sale” display. J.A. 10–12.

Siny appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(B).

We review the Board’s legal conclusions de novo and its factual findings for substantial evidence. E.g., Royal Crown Co. v. The Coca-Cola Co., 892 F.3d 1358, 1364–65 (Fed. Cir. 2018). Substantial evidence is “such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.” Id. at 1365 (quoting Consol. Edison Co. of N.Y. v. NLRB, 305 U.S. 197, 229 (1938)).

The Lanham Act provides for registration of a mark based on use of the mark in commerce. 15 U.S.C. § 1051(a). A mark is deemed in use in commerce on goods when, among other things, “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.” Id. § 1127. The U.S. Patent and Trademark Office (PTO) requires an applicant to submit a specimen of use “showing the mark as used on or in connection with the goods.” In re Sones, 590 F.3d 1282, 1284 (Fed. Cir. 2009).

The issue on appeal concerns whether the Webpage Specimen qualifies as a display associated with the goods under the Lanham Act. Mere advertising is not enough to qualify as such a display. See Powermatics, Inc. v. Globe Roofing Prods. Co., 341 F.2d 127, 130 (CCPA 1965) (“It is well settled that mere advertising and documentary use of a notation apart from the goods do not constitute technical trademark use.”); see also Avakoff v. S. Pac. Co., 765 F.2d 1097, 1098 (Fed. Cir. 1985); Lands’ End, Inc. v. Manback, 797 F. Supp. 511, 513 (E.D. Va. 1992). In determining whether a specimen qualifies as a display associated with the goods, one important consideration is whether the display is at a point-of-sale location. See In re Sones, 590 F.3d at 1289 (identifying the point-of-sale nature of a display as a relevant consideration); In re Marriott Corp., 459 F.2d 525, 527 (CCPA 1972) (likening the menus at issue to point-of-sale counter and window displays previously found acceptable); Lands’ End, 797 F. Supp. at 514 (“A crucial factor in the analysis is if the use of an alleged mark is at a point of sale location.”).

Whether a specimen qualifies as a display associated with the goods is a factual question. See In re Marriott Corp., 459 F.2d at 526 (“In our view, ‘association with the goods’ is a relative term amenable to proof.”); Lands’ End, 797 F. Supp. at 514 (“The determination of whether a specimen is mere advertising or a display associated with the goods is a factual question amenable to proof.”); accord In re Valenite Inc., 84 U.S.P.Q.2d 1346 (T.T.A.B. 2007) (“Whether a specimen is mere advertising or whether it is a display associated with the goods is a question of fact which must be determined in each case based on the evidence in that particular case.” (citing In re Shipley Co., 230 U.S.P.Q. 691 (T.T.A.B. 1986))).

(…) We disagree that the Board applied improperly rigid requirements here. Rather, the Board carefully considered the Webpage Specimen’s contents and determined, on the record before it, that the specimen did not cross the line from mere advertising to an acceptable display associated with the goods. We cannot say that the Board’s determination lacked substantial evidence.

(U.S. Court of Appeals for the Federal Circuit, Jan. 14, 2019, In Re: Siny Corp., Docket No. 2018-1077, Precedential)