Thought Leadership on Intellectual Property Protection presented by Nath, Goldberg & Meyer.
By Joshua B. Goldberg
Here’s the good news: You’ve started your new business and things are going well. Your company is thriving, expanding, and making money for you. But, as is common among business owners, you are still losing sleep worrying about any threats that may exist to your fledgling (or established) company.
Some of these threats may be obvious, such as a competing product or service in the market. Others may be less obvious, such as the existence of another company operating under a similar name as yours, selling a similarly named product, or otherwise using a brand that at best could cause confusion with, or at worst, is a direct copy of your brand. Thankfully, there is a solution to this problem, namely obtaining one or more federal trademark registrations.
Trademark applications based on the actual use of the mark in commerce, and post-registration filings, such as Declarations of Use, must be supported by at least one specimen for each class, showing use of the mark in commerce on or in connection with the goods, or in the sale or advertising of your services. A specimen for goods could consist of product packaging, labels, tags, photographs of the goods showing the mark, or point-of-sale materials.
In many instances, our clients erroneously believe that websites are always sufficient specimen for goods to support a trademark registration. This is not the case. The U.S. Patent and Trademark Office (USPTO) has very strict rules regarding whether a website can be considered a point-of-sale material, and thus, an acceptable specimen for goods. This article addresses the requirements for submitting a website as a specimen for goods and lists three ways to avoid refusals at the USPTO.
- Proximity of mark to goods
For a website to be an acceptable specimen for goods, something on the website must identify the goods to consumers, namely, a photograph or description of the goods. A description of the goods is usually sufficient if the features of the goods are identifiable from the description.
Furthermore, the website specimen must also associate the mark with the goods as an indicator of source.
To reduce the likelihood of receiving a refusal from the USPTO, we suggest that clients:
- Place the mark directly next to a picture or description of the goods;
- Refrain from including material on the specimen that is unrelated to the identified goods; and
- Avoid including other marks on the specimen.
- Prominence of mark
When determining whether a website shows a mark in association with the identified goods, the examining attorney often considers the prominence of the mark. The more prominently a mark appears on a website, the more likely the mark will be perceived by consumers as a trademark.
To increase the prominence of a mark on a website, we suggest that clients:
- Present the mark in a larger font size or different stylization/color;
- Use the mark at the beginning of a line or sentence; and
- Utilize the mark in the top left or center of the website.
- Ordering information
Though perfectly acceptable to show use with services, advertising material is usually not acceptable as a specimen for goods. A website that is merely used to tell prospective purchasers about goods or to promote the sale of goods is unacceptable to support trademark use.
To be acceptable as a specimen, a website must be a point-of-sale display that includes information necessary to allow consumers to immediately purchase the identified goods. This can be satisfied by providing:
- A link to “purchase online”;
- Information about the shipment of goods;
- Information on minimum quantities; and
- Methods of payment.
In most cases, the inclusion of email addresses and telephone numbers, without any of the above-mentioned ordering information, will not transform advertising material into a point-of-sale display.
Nath, Goldberg & Meyer regularly advises its clients on the requirements for utilizing a website as a specimen for goods. Please do not hesitate to contact us should you have any questions.