December 2009 / January 2010 Issue

Civil Cases

In re Sones,
93 USPQ2d 1118 (Fed. Cir. Dec. 23, 2009)

ABSTRACT
Applicant’s website-based specimen of use for the mark ONE NATION UNDER GOD for charity bracelets was rejected by the TTAB on the basis that the specimen did not include a picture of the goods.  The Federal Circuit vacated and remanded the decision, refusing to apply the TTAB-created bright-line rule regarding website-based specimens, and further holding that the TTAB’s bright-line rule was an incorrect legal standard.  The court clarified that a picture is not a mandatory requirement for a website-based specimen of use.

CASE SUMMARY

FACTS
Michael Sones (“Applicant”) filed an intent-to-use application for the mark ONE NATION UNDER GOD for charity bracelets.  The PTO rejected Applicant’s specimen of use consisting of two pages from a website displaying a product listing for ONE NATION UNDER GOD charity bracelets and a purchasing function, but not a picture of the product.  The PTO stated that the website printout “does not contain a picture of the goods and thus is unacceptable as showing use of the goods in commerce.” 

On appeal, the TTAB agreed with the PTO’s objection to the specimen, repeating that the specimen’s defect was that it “do[es] not include a picture of the goods.”  In reaching this conclusion, the TTAB relied on the three required criteria for specimens constituting a display associated with the goods expressed in Lands’ End, Inc. v. Manbeck, 797 F. Supp. 511 (E.D. Va. 1992), and first applied to websites in In re Dell, 71 USPQ2d 1725 (TTAB 2004).  Under Lands’ End, the test required that a specimen must (1) include a picture of the relevant goods; (2) show the mark sufficiently near the picture of the goods to associate the mark with the goods; and (3) contain the information necessary to order the goods.  The TTAB further noted that the Trademark Manual of Examining Procedure (“TMEP”) § 904.03(g), (h) had also adopted this three-part test.  Concluding that Applicant had failed to submit an acceptable specimen, the TTAB affirmed the PTO’s refusal to register Applicant’s mark.  Applicant then filed an appeal to the Federal Circuit.

ANALYSIS
Applicant argued to the Federal Circuit that the TTAB erred in imposing a bright-line rule that a website specimen of use must contain a picture. 

At the center of the PTO’s argument was the Lands’ End decision, in which the court found a page of a mail-order catalog including a picture, item description, and purchase form to be an acceptable specimen.  The PTO argued that the TMEP, having adopted the three-part test from Lands’ End, indicated that a “webpage must show the goods, not merely list them,” in order to qualify as an acceptable specimen. 

The Federal Circuit reviewed the TTAB’s subsequent application of Lands’ End and the test prescribed by the TMEP, noting that the TTAB had, in fact, extended the Lands’ End reasoning and the requirement for a picture to website specimens.  The Federal Circuit rejected the TTAB’s interpretation of Lands’ End, noting that even the Lands’ End decision did not apply the three-part test as an absolute requirement.  The court found that Lands’ End did not state that a photograph was mandatory, instead acknowledging a combination of factors to determine “whether the customer had ‘the opportunity to look to the displayed mark as a means of identifying and distinguishing the source of goods.’”

Additionally, the Federal Circuit found no foundation for the TTAB’s bright-line rule in the trademark statute or policy.  Citing the Lanham Act, the court held that the statute does not impose particular requirements for how an applicant demonstrates source or origin, instead simply requiring that the mark be associated with the goods. 

Finally, the court declined to follow the rigid three-part Lands’ End test cited in the TMEP.  The court noted that while the TMEP is instructive, it “is not established law.”  Moreover, the court reasoned that the TMEP’s three-part test was enumerated in § 904.03(h) for “Catalogs,” whereas the separate section for “Electronic Displays” contained no such three-part test, nor did it state a picture requirement.  According to the Federal Circuit, the proper test for a website-based specimen of use was identical to the test for any other specimen—namely, that the specimen “must in some way evince that the mark is ‘associated’ with the goods and services as an indicator of source.”  A picture is a consideration in determining whether a specimen associates the mark with the source of goods, but is not a necessary component.  Thus, the absence or presence of a picture in a website-based specimen of use is not alone determinative of acceptability.  The Federal Circuit vacated and remanded the TTAB’s decision for further consideration of Applicant’s specimen of use.

Judge Newman dissented, arguing that, given Applicant’s voluntary, recent filing of a new trademark application for the identical mark, including a specimen containing a picture of the goods, this case had “lost its character as a present, live controversy.”  Judge Newman argued that Applicant had rendered this case moot by voluntarily refiling and prosecuting a trademark application based on actual use for the identical mark.  Absent a live controversy, the Federal Circuit’s opinion constituted an advisory opinion on a nonissue and should have been dismissed as moot.

CONCLUSION
This decision clarifies the requirements for website-based specimens of use.  Moreover, the Federal Circuit confirmed that the relevant inquiry in determining whether a specimen of use is acceptable remains whether the specimen demonstrates that the mark is “associated” with the goods and services as an indicator of source, regardless of whether it is a tangible or website-based specimen.  Notably, this decision marks a departure from requirements for website-based specimens that had been previously imposed by the PTO and followed by the TTAB.