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News / Apr 15, 2019

Federal Circuit Makes Ruling on Trademarking Websites Precedential

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By Clyde Shuman

At the urging of the U.S. Patent and Trademark Office, the Federal Circuit has made precedential its January ruling in In re: Siny Corp., case number 18-1077, clarifying what sales information must appear on a company’s website for it to register a trademark.

The Lanham Act allows registration of trademarks where the proposed marks are considered “in use in commerce,” including being placed on goods or “displays associated therewith,” such as a website. The Court’s January ruling in Siny, made precedential on April 10, addressed whether a particular website specimen, submitted with a trademark application qualified as a “display” associated with goods under the Lanham Act.

By way of background, the examining attorney initially refused registration because the specimen “appear[ed] to be mere advertising material” and thus failed to show the requisite use in commerce for the goods. The examining attorney noted in particular that the specimen did not include a means for ordering the goods. The examining attorney rejected Siny’s argument that the webpage specimen included a means to purchase the goods—the text “For sales information:” followed by a phone number and email address. He found that the cited text merely indicated how consumers could obtain more information necessary to make a purchase. The examining attorney noted the absence of what he considered necessary ordering information, such as minimum quantities, cost, payment options, or shipping information.

The Trademark Trial and Appeal Board affirmed the examining attorney’s refusal. Considering the webpage specimen in detail, it found that the specimen lacked much of the information the Board would consider essential to a purchasing decision—e.g., a price (or even a range of prices) for the goods, the minimum quantities one may order, accepted methods of payment, or how the goods would be shipped. The Board further noted the absence of any evidence of how sales are actually made. Although acknowledging Siny’s argument that, because the goods were industrial materials for use by customers in manufacture, the ultimate sales transaction may have to involve some assistance from Siny’s sales personnel, the Board found that “while some details must be worked out by telephone, if virtually all important aspects of the transaction must be deter-mined from information extraneous to the web page, then the web page is not a point of sale.” The Board added that in cases where the goods are technical and specialized and the applicant and examining attorney disagree on the point-of-sale nature of a webpage specimen, “the applicant would be well advised to provide [ ] additional evidence and information regarding the manner in which purchases are actually made through the webpage.” The Board found that the webpage specimen was not a display associated with the goods within the meaning of the Lanham Act.

The Federal Circuit, in turn, affirmed the Board’s decision. While not imposing a “bright-line” rule, the Court affirmed the Board’s determination that the specimen did not cross the line from mere advertising to an acceptable display associated with the goods.

On March 14, the Patent and Trademark Office requested that the Court make precedential its originally non-precedential decision, saying, reissuing the decision as precedential “will provide certainty to future applicants regarding what satisfies the statutory requirements for ‘displays associated’ with goods [and] will reduce the probability of subsequent litigation over the very same question of statutory construction concerning displays associated with goods.”

On April 10, the Court granted the request, making its January ruling precedential.

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