On April 10, 2019, the United States Court of Appeals for the Federal Circuit issued a precedential opinion regarding webpages as specimens of use.
In the matter of In re: Siny Corp., the Court upheld a decision of the Trademark Trial and Appeal Board refusing to register Siny’s proposed mark based on an insufficient specimen.
The initially submitted specimen consisted of a webpage printout, which the examining attorney concluded to be “mere advertising material” since the specimen did not include a means for ordering the goods. A substitute specimen was submitted which included the additional language “For sales information:” along with a phone number and address. The examining attorney maintained his refusal, stating that the contact information was “insufficient for consumers to make a purchase; rather, it only indicated how consumers could obtain more information necessary to make a purchase.”
This opinion indicates that, in order for a webpage to be considered a valid specimen, it should include more than just basic contact information, and needs to display standard ordering information, such as minimum quantities, cost, payment options, or shipping information.
Further, of particular interest for online technology companies, the opinion notes that “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.”
This evidence can be documentation or verified statements from knowledgeable personnel as to what happens and how, but should be considered and prepared during the trademark application process if using a webpage specimen.
