Federal Circuit Rejects Bright-Line Rule for Internet Specimens of Use
Michael Sones filed an intent-to-use application for the mark "ONE NATION UNDER GOD" for charity bracelets. After the PTO issued a notice of allowance, Sones submitted his Statement of Use along with a specimen of use consisting of two pages from a website bearing the title "Beaches Chapel School Store." Under this title, there appeared a listing for "ONE NATION UNDER GOD™ CHARITY BRACELET" followed by further text stating "ONE NATION UNDER GOD™ CHARITY BRACELET CHOICE OF BLUE OR RED $2.00 EACH." Next to the description appeared a shaded box that stated "Photo not availble [sic]." The specimen further showed a "shopping cart" functionality for online ordering.
The PTO rejected Sones' Statement of Use stating that the specimen did "not show a picture of the goods in close proximity to the mark." Sones submitted argument in rebuttal but did not submit a picture of the charity bracelets or any new textual description. The PTO then issued a final office action affirming the rejection. The TTAB affirmed the decision stating that "it is readily apparent that [the webpages] do not include a picture of the goods."
On the same day that the TTAB's decision affirming the rejection was mailed, Sones filed a use-based application to register the same mark for charity bracelets. He submitted a website specimen showing a picture of the bracelet but the alleged use in commerce date was later than that of Sones' original intent-to-use application.
On appeal, the Federal Circuit first disposed of any claim by the PTO that it was not proposing a bright-line rule requiring a picture for every website specimen of use, concluding that "the PTO's position has been consistent from prosecution up to oral argument in this appeal: a website specimen of use must have a picture of the goods."
The Federal Circuit then examined the origin of the PTO's "rule" from the case of Lands' End, Inc. v. Manbeck, 797 F. Supp. 511 (E.D. Va. 1992). That case involved a specimen of use from a mail order catalog for the mark "KETCH" for purses. The submitted specimen consisted of a catalog page showing a picture of a purse, a description and the term "KETCH." The court in Lands' End concluded that the use of the term with the picture of the purse and the corresponding description was a sufficient display associated with the goods.
The PTO interpreted Lands' End to require that a catalog specimen include a picture of the relevant goods (among other requirements) and created a new section addressing that requirement in the trademark examining manual for "catalogs as specimens." In addition, the Federal Circuit examined the cases demonstrating that the PTO had applied this interpretation of Lands' End to website specimens, including "a rigid requirement for a picture."
The Federal Circuit read Lands' End differently, however, concluding that the case did not state that a picture is mandatory or that such a requirement applied to website specimens. Nor could the Federal Circuit find any basis for a picture requirement in trademark law or policy. Thus, the Court concluded 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, just as any other specimen, is simply that it must in some way evince that the mark is "associated" with the goods and services as an indicator of source.
The Federal Circuit therefore remanded the case for the PTO to consider Sones' specimen of use in light of the appropriate standard.
Circuit Judge Newman dissented from the decision contending that Sones had rendered the issue moot by filing the second, use-based application for the same mark for the same goods and submitting a specimen that included a picture.
The cite is In re Michael Sones, No. 2009-1140 (Fed. Cir. Dec. 23, 2009) and includes a photo of the website specimen submitted by Sones.
