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Federal Circuit Rejects PTO’s Bright-Line Rule That a Picture Is Required for a Website-Based Specimen of Use

December 23, 2009

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Last Month at the Federal Circuit - January 2010

Judges: Newman (dissenting), Rader, Linn (author)

[Appealed from: TTAB]

In In re Sones, No. 09-1140 (Fed. Cir. Dec. 23, 2009), the Federal Circuit vacated and remanded the TTAB’s final decision denying Michael Sones’s registration application for the mark “ONE NATION UNDER GOD” for charity bracelets. 

Sones filed an intent-to-use application for his mark with the PTO, which issued a notice of allowance.  Six months later, Sones submitted his Statement of Use with a specimen of use consisting of two pages from a website containing a listing for his product.  The PTO rejected Sones’s Statement of Use because the specimen did not show a picture of the goods in close proximity to the mark.  In response, Sones made rebuttal arguments but did not submit a picture of his charity bracelets.  The PTO then issued a final office action affirming the rejection over Sones’s arguments.  Sones appealed to the TTAB, which affirmed the examiner’s objections.

Sones appealed the TTAB’s decision to the Federal Circuit, arguing that the TTAB imposed a
bright-line rule that a trademark specimen of use taken from a website must contain a picture.  The Court agreed with Sones, finding that the PTO’s position was consistent from prosecution up to oral argument in the appeal that a website specimen of use must have a picture of the goods.

As support, the PTO relied on the case, Lands’ End, Inc. v. Manbeck, 797 F. Supp. 511 (E.D. Va. 1992).  In Lands’ End, the district court addressed a specimen of use from a mail order catalog, observing that the catalog pages included a picture and a description of each item.  Afterwards, the PTO adopted Lands’ End in the Trademark Manual of Examining Procedure (“TMEP”), creating a new section specifically for catalogs as specimens.  The new section defined a new three-part test for catalogs, including the requirement that the catalog (1) include a picture of the relevant goods, (2) include the mark sufficiently near the picture of the goods to associate the mark with the goods, and (3) include information necessary to order the goods.  The Federal Circuit noted that the PTO has since applied the three-part test in several decisions.  Collectively, the Court stated that the decisions show that the TTAB has adopted its interpretation of the Lands’ End test for catalog specimens to website specimens, including the rigid requirement for a picture.

The Court, however, did not interpret Lands’ End or trademark law to require that specimens of use from the Internet must always have pictures.  The Court stated that Lands’ End did not impose the three parts of the TMEP test as absolute requirements, as it cited other factors in approving the specimen.  Moreover, the Court found that the bright-line rule had no basis in trademark statute or policy.  The statute does not specify particular requirements to demonstrate source or origin.  The Court also noted that tangible specimens can show use in commerce by describing the goods in sufficient detail in relation to the marks.

Given these criteria for physical specimens of use, the Federal Circuit saw no reason why websites must necessarily have pictures to associate a trademark with the goods being sold.  The Court noted that if, as the TMEP suggests, ordering from a website is equivalent to picking up a box in a store, and boxes do not need photographs per se to link a trademark to the goods inside, then neither should websites. 

Accordingly, the Court held that a picture is not a mandatory requirement for a website-based specimen of use, and that the test for an acceptable website-based specimen is simply that it must in some way evince that the mark is “associated” with the goods and serves as an indicator of source.  Slip op. at 11-12.  On remand, the Court ordered the PTO to consider the evidence as a whole to determine if Sones’s specimen sufficiently associated his mark with his charity bracelets so as to “identify and distinguish the goods.”  Id. at 12.  The Court identified relevant factors to consider, including whether Sones’s webpages have a point of sale nature, and whether the actual features or inherent characteristics of the goods are recognizable from the textual description.

In her dissent, Judge Newman stated that the Court issued an advisory opinion on a nonissue as between the parties.  Judge Newman noted that the appeal should be dismissed as moot because Sones voluntarily filed another application based on actual use of the same mark in which he submitted a website specimen that showed a picture of the bracelets.  Thus, Judge Newman stated that Sones removed the case from controversy because there remained no basis for appealing the intent-to-use application when Sones chose to file an application based on actual use.

Summary authored by Tina E. Hulse, M.D., Esq.