Unless a U.S. trademark application is based solely upon a corresponding registration from a foreign country or is an extension of an International Registration, the applicant will be called upon at some point as a condition of registration to submit proof of use of the mark in commerce for the relevant goods and/or services. Use of a mark for services typically is shown through a webpage or other form of advertising in which the mark is featured. For goods, an applicant typically must provide a specimen reflecting use of the mark on the goods themselves; on packaging, labeling or a hangtag for the goods; or in a display associated with the goods.
The focus herein is on the use of a webpage as an electronic “display associated with the goods”. Notably, such a webpage need not be from an applicant’s own website. A page from, for example, the site of a third-party retailer that sells the applicant’s goods can serve this purpose.
Under the test applied by the USPTO, a webpage is a suitable specimen of use for goods if it (1) contains a picture or textual description of the identified goods; (2) shows the mark in association with the goods; and (3) provides a means for ordering the identified goods. For the first prong of the test, where an applicant is relying on a textual description as opposed to a photo of the product(s), the description will be deemed sufficient if “the actual features or inherent characteristics of the goods are recognizable from the textual description”.
Regarding the second element, whether a particular webpage reflects an association between the mark and the goods at issue involves a review of a number of variables. These include the prominence and placement of the mark, the content and layout of the page, and the overall impression that is created by the page. With respect to prominence, the mark certainly should be relatively conspicuous on the pertinent page. It can be problematic if, for example, the mark is obscured by surrounding text, or is presented only in a remote corner of the page’s footer.
Another key consideration for this element is the physical distance between the mark and the photo or description of the goods. A closer connection increases the likelihood that consumers would associate the mark with the goods, while greater distance would have the opposite effect. Other factors that would tend to disrupt purchasers from making the required association include the presence of additional marks on the page and intervening text, photos and/or graphics between the mark at issue and the photo/description of the pertinent goods.
The third prong of the test requires that the webpage provide a means of ordering the goods. This obviously is satisfied where the page or website itself is capable of processing orders for the goods directly, such as through the use of a “shopping cart” feature that readily conveys the page’s point-of-sale character. However, the ordering also can be through indirect means from information gleaned from the page, such as the posting of a telephone number through which the goods may be purchased.
In addition to meeting the test set forth above, the USPTO’s rules require for a webpage specimen that an applicant also provide the URL for the submitted page and the date that it was accessed. This information enables the USPTO Examiner assigned to review the application to verify the specimen.
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