Electronic Displays as Specimens
Specimens are required to be submitted to the United States Patent & Trademark Office ("USPTO") for review by Examining Attorneys before a trademark will be permitted to register. A specimen is a demonstration of how the applicant is using the trademark in connection with the goods or services in commerce. It must show the mark as a source indicator. To learn more about the general rules pertaining to specimens, see our webpage entitled Acceptable Trademark Specimens.
The Internet has played a dominant role in prompting change in trademark rules to incorporate electronic displays as acceptable specimens. Traditional rules remain relevant, such as a display must be associated directly with the goods offered for sale, see the Trademark Manual Of Examining Procedure ("TMEP") Section 904.03(g). It addition, the trademark must appear in a prominent manner on the display. Examples of how one can set the mark apart on the web page may include: (1) having the mark appear in larger font size than the rest of the text; (2) presenting the mark in a different stylization or color than the rest of the content on the page; (3) showing the mark in bold type next to a picture of the goods or description of the product; and (4) using the tm symbol with the applied mark and place the mark at the top of the web page. The factors are not determinative and the web page as a whole must be evaluated.
Traditional displays include point of sale material, including banners, window displays, menus, catalogs (only if it includes a picture or description of the relevant goods and includes information necessary to order) and shelf-talkers or even an infomercial. In our electronic age, displays include web pages. In the online environment, the electronic displays must satisfy the same standards, see TMEP 904.03(i) for more details on this topic.
Whether the display is a traditional type or an electronic version, it must attract the attention of prospective consumers and induce them to purchase the goods or services. A web page will constitute an electronic display if it is associated with the goods, contains a picture or sufficient textual description of the goods and shows the manner and/or means for ordering the goods. In addition, consumers must recognize the term as a trademark in the way it is displayed on the web page. If the mark is appearing in the ordinary text of the site or is perceived to be conveying information and not acting as a source indicator, the specimen will be refused by the USPTO. It is also acceptable to submit a web page of a third-party seller to demonstrate your use of the mark, if it satisfies the elements of a display specimen.
A display must be more than mere advertisement or promotional material. For example, an ad for goods or services merely provides information and does not provide a means for ordering the goods or services. Indicators of the ability to purchase the goods may include an order form, shopping cart feature, or contact information to place an order. Whether a web page display will meet the requirements of a specimen is a question of fact determined by the Examining Attorney assigned to review the trademark application.
The burden is on the applicant to prove the web page meets the criteria established in the TMEP. For example, if the ordering information is not visible from the submitted web page, then it might be that the applicant has to provide additional web pages as part of the specimen and provide an explanation for the Examiner to thoroughly understand how the user of the web site orders the product. If the web page does not have a picture of the goods, it must adequately describe the goods so the features and prominent characteristics are recognizable in the text.
There are also distinct requirements for marks functioning to brand goods and those acting as source indicators for services. The critical factor will be the perception of the ordinary consumer. One other consideration will be if the mark is the only trademark on the page connected to the goods. Applicants should consult with trademark counsel prior to submitting a specimen to the USPT0. Kindly contact our office for a courtesy telephone consult, if you are in need of trademark guidance.