When Is A Display "Associated" With E-Commerce Goods? The TTAB Provides An Internet Friendly Answer
Traditional legal concepts and e-commerce have not always easily coexisted. Nowhere is this more apparent than trademarks where the traditional “affixation” requirement flies in the face of how modern internet transactions are proposed and consummated. Through its decision in In re Valenite Inc., Serial No. 76482852 (July 31, 2007), the Trademark Trial and Appeal Board has, fortunately, engaged in some creative rule bending which provides breathing space for the new realities of the electronic marketplace while remaining faithful to the underpinnings of trademark law – namely, assuring protection only for marks which identify the source of products because of how they are perceived by the relevant purchasing public.
Trademark rights in the United States are based on use. The trademark applicant is, therefore, required to submit a specimen showing use of the mark on the goods themselves. This “affixation” requirement traditionally mandated actually placing the mark on the product itself before the registration would issue. A label, tag, or container for the goods would be ideal although a display associated with the goods would also suffice. Trademark Rule 2.56 (b)(1). Such permissible displays were often confined to point of sale advertising in a brick-and-mortar retail outlet. Printed catalog sales were analogized to point of sale displays and eventually held to be valid specimens supporting proof of source identifying significance. This did not, however, account for the kinds of internet sales transactions which have become an increasingly important part of our economic engine where goods are often identified through reference to a single use on a home rather than “catalog” page.
A catalog or similar display specimen submitted as evidence of use of a mark needed to fulfill a three prong test in order to be an acceptable “display associated with the goods”: (i) include a picture of the relevant goods; (ii) show the mark sufficiently near the picture of the goods to associate the mark with the goods; and (iii) include the information necessary to order the goods. See Land’s End v. Manbeck, 24 USPQ2d 1314 (E.D. Va. 1992).
In re Dell, Inc., 71 USPQ2d 1725 (TTAB 2004), the TTAB moved away from these printed media strictures by providing confirmation that an Internet web page can be an appropriate display trademark specimen. Although providing some useful guidelines for making such a determination, there was still substantial uncertainty over how to meet these standards. The Valenite decision now fills in some of those gaps by providing further guidance for the second and third factors.
In Valenite, the applicant’s specimens consisted of two web page printouts from the Company’s website. The trademark examining attorney contended these “display” specimens were not acceptable because the mark was not “associated” with the goods and there was insufficient ordering information, thereby failing the second and third prongs. The TTAB disagreed.
The TTAB found the second prong of the test was satisfied because the trademark at issue, “VALPRO”, was prominently displayed at the top middle of the webpage with a picture of some of the products appearing to the left. The fact that the mark and the name of the products were not immediately adjacent did not defeat a finding that the public would understand the source identifying connection.
Also, although it did not use an “Order Cart” or a similar ordering device on its website (in order to satisfy the catalog requirement for ordering information), the TTAB found that Valenite’s web page still satisfied the third prong because of the manner in which sales transactions were proposed and completed. Customers needed to consider technical information about the products prior to placing their order and in fact, did so, to order products by way of the Customer Service toll-free numbers after discussing the technical information with the applicant’s telephone representatives. Because the web site provided an on-line catalog, technical information to further the prospective purchaser’s determination of which particular product to consider, an online calculator, and a link and a phone number for customer service representatives, and, with due regard to the “prevalence of online retailing” and the specialized nature of Valenite’s products, the Board held Valenite’s web site constituted a “display associated with the goods” and, therefore, a proper specimen for tools for power operated metal cutting machines.
While Valenite is a fact specific application of the three prong test for displays as trademarks, such fact are not uncommon in the world of e-commerce. This decision, marked as a “precedent”, thus sets a practical precedent for companies seeking registered trademark protection where they sell most or all of their goods online, especially since these companies often have no traditional trademark specimens such as point-of-sale displays, packaging, or even catalogs. It also suggests that the TTAB will remain flexible when confronted by a likely continuing myriad of new commerce issues.