Webpage specimens not automatically use in commerce

On April 10, 2019, the Federal Circuit issued a precedential opinion, at the request of the U.S. Patent and Trademark Office (USPTO), regarding submissions of webpages as specimens of use. In re Siny Corp is an important reminder to applicants and practitioners to carefully consider whether webpage specimens to be submitted to the USPTO actually comprise the offering of goods and/or services at the point of sale, or whether they are mere advertising.

In an important footnote, the Federal Circuit reminds us that the webpage specimen at issue here is unlike the one usually found in online marketplaces, where goods are available for immediate purchase. Here, the webpage specimen did not include essential information for consumers to make a purchase. It lacked:
(i) a price or range of prices for the goods
(ii) minimum quantities
(iii) payment options, and/or
(iv) shipping information.

Instead, the webpage merely displayed a notice directing consumers to a phone number and email address “For sales information.” The Trademark Trial and Appeal Board, in its earlier finding assumed that this webpage would connect a prospective customer to sales personnel, but “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” display and is not an acceptable specimen of use. Instead, the Board considered the webpage printout as mere advertising, and the Federal Circuit agreed.

Trademark owners should not panic. Webpages that do make goods and/or services available for purchase on the webpage itself will continue to be accepted as proper specimens (depending, of course, on the nature of the webpage at issue).

The case is In re: Siny Corp., Appeal No. 2018-1077 (Fed. Cir. 2019).

A printout of the rejected specimen can be found by clicking here.

By Susan Kayser, Aryane Garansi and David Byer

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