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)
