Because so many companies market their goods and services online, owners and management naturally expect that their branded websites will be good specimens to support their applications for trademark registration and extensions.
Websites are usually excellent and appropriate demonstrations of the use of a trademark. But, companies are well-advised to use extra care when submitting a website sample as a supporting specimen for trademark registration; the USPTO’s examination of them is especially exacting. If it finds the specimen insufficient, the consequence may be long delays in the application process and possible rejection of the mark.
As background, trademarks are intended to protect consumers from confusion about the source of goods and services. US trademark registration is based on use in interstate commerce, and requires a declaration that a mark is in actual use in order to entitle a would-be trademark holder to final registration.
To demonstrate use in commerce, applicants submit samples showing the brand being employed to actually sell, or offer for sale, the goods or services in question. An appropriate specimen for goods might be a product’s packaging or a point of sale display showing the mark affixed to or next to a product and the price at which it is offered to consumers. For services, a brochure or advertisement might describe a company’s service, its pricing structure and how the service is contracted for.
Applicants must take heed that the USPTO applies not only a “commerce,” but also an “interstate commerce” requirement. Worldwide websites often seem the obvious solution to the requirement that a specimen show use in multiple states. But according to recent guidelines released by the USPTO, websites will only suffice under certain fairly defined circumstances.
First, the sample must contain either a picture or textual description of the goods or services offered. Also, if the website is intended to demonstrate use of the mark for goods or services in several classes of use, i.e. kitchen equipment (Class 21), aprons (Class 25), and cooking classes (Class 41), eachclass must be represented in the specimen provided.
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| A shot from American Apparel’s homepage showing their mark, goods associated with it, and a link to order them. |
Second, the mark must be prominently displayed in the website specimen on or next to the associated goods or services. What does prominently mean? Applicants should ensure that the website distinguishes the mark from surrounding text by using a different font, stylization, color, or position. The mark should look like a brand for the goods or services.
Finally, the web specimen should provide the information necessary to purchase the goods or services. This typically includes their price as well as a method for ordering them, such as a 1-800 number, an order form, or “checkout” button.
Having a web specimen that incorporates the requisite elements will significantly streamline the registration process. Months can pass before the USPTO issues its office action to inform an applicant that a specimen is deficient. Then the applicant is challenged to find an appropriate specimen that was in existence at the time of the use date stated in the application. If an owner expects a website to support a trademark application or a demonstration of continued use, a company and its web developer should consider these trademark application standards at the time the website is being constructed. These best practices go a long way toward efficiently establishing the trademark protection companies value.
Lizbeth Hasse
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