What makes trademark web specimens tricky?
Nowadays, it would seem unusual if a company does not sell any of its goods online. Sure, certain big ticket items may not be suitable for ecommerce, but such expensive products would not represent the typical purchases made by most consumers on a regular basis. The reality is that most sellers display and sell their products on the web. When it comes to submitting evidence of use of a mark in a trademark application, it’s only natural that sellers would be inclined to submit trademark web specimens.
Be careful. Many traps threaten the unwary applicant seeking to submit webpages as specimens of use. And certain mistakes may be irreversible. Let’s see how we can avoid the common errors with trademark website specimens.
What are the specimen requirements for electronic displays?
An acceptable display associated with goods has different requirements than those for services which are generally looser. As specimens for goods, a webpage must:
- contain a picture or textual description of the identified goods;
- show the mark in association with the goods; and
- provide a means for ordering the identified goods.
It seems simple enough, so why are webpages frequently rejected as unacceptable specimens? Many cases boil down to a failure to meet one overarching requirement: the mark must be displayed on the webpage in a manner in which customers will recognize it as a mark? To find out what that means, we can learn from examples from TMEP 904.03(i) which failed to display the mark on the webpage in a satisfactory manner.
What are examples of acceptable webpage specimens?
Here are some examples taken from the USPTO trademark manual (TMEP) showing acceptable webpage specimens. Each example includes the above three requirements: 1) the mark is directly associated with the goods, 2) goods are pictured and described, and 3) ordering information is provided.
Sometimes a webpage may be acceptable for showing use of multiple marks:
What are examples of webpage specimen fails?
Several characteristics of the mark or the webpage may lead to a rejection of the specimen. Here are common webpage specimen fails and recommendations on how to avoid a specimen rejection.
Prominence of mark
Showing the mark more prominently on a webpage will improve the probability that it will be perceived as trademark, thereby increasing chances of approval of such a specimen. You can make a more prominent on a webpage by doing the following:
- show the mark in larger font or different stylization or color than the surrounding text;
- place the mark at the beginning of a line, as opposed to the middle of a sentence;
- position the mark next to a picture or description of the goods; and/or
- use the TM symbol with the mark.
Proximity of the mark to the goods
Placing the mark near the top of the webpage may suffice as a specimen for online retail store services. For goods, however, the placement of the mark should be in close proximity to the goods shown on the webpage.
Here are some examples where webpages would fail as specimens for goods:
- URL or email address only
- top left corner and not adjacent to the goods shown on the webpage
- webpage shows goods bearing other trademarks while the applied-for mark is spaced farther apart
- using applied-for mark in a sentence that references other trademarks for the goods
What constitutes sufficient ordering information for trademark web specimens?
Another possible reason for a specimen rejection is insufficient ordering information. Examples of sufficient ordering information include a shopping cart or shopping bag, a SHOP ONLINE tab, a phone number to place an order.
Examples of insufficient ordering information include:
- Where To Buy information
- “Click here for more information”
- Contact us
- Customize or configure buttons and links