A Picture on a Website is Not Necessarily Required for a Trademark Specimen

The Court of Appeals for the Federal Circuit ("CAFC") has held in In Re Michael Sones that a photograph is not necessarily required in a specimen to support a Statement of Use.  In the Sones case, the trademark applicant applied to register the mark "ONE NATION UNDER GOD" for use on Charity Bracelets (Serial No. 78/717,427).  The application was filed under Section 1(b) of the Lanham Act on the basis of a bone fide intent to use the mark in commerce.  The mark was allowed after being published for opposition for the required 30 day opposition period.  

The applicant filed a Statement of Use together with a "specimen" showing the mark as used in commerce. The specimen consisted of a web page that included the mark and the description "Charity Bracelet".

The USPTO rule for Internet specimens is provided in the Trademark Manual of Examining Procedure at § 905.06:

Displays may be used as Specimens, provided:

1. A picture of the relevant goods is included;
2. The mark is sufficiently near the picture of the goods to associate the mark with the goods; and
3. Information necessary to order the goods is provided.

This is known as a point of sale display specimen and was adopted by the USPTO after the Internet began to be used for interstate commerce.   At that time, the USPTO was strict in their acceptance of Internet specimens for purposes of supporting a Statement of Use.

During oral arguments, the Court asked the USPTO attorney interesting questions regarding the practical need for photographs in an Internet specimen.  For example, Judge Linn asked whether a picture of a point of sale display in a store would be rejected if the photograph consisted of  the mark near a stack of plain boxes, each of which included the mark.  The USPTO attorney said that it probably would.  Oral arguments are available to listen to online here.

The operative question, according to the CAFC is whether the mark is associated with the goods on which the mark is used.  On remand, the CAFC has ordered the CAFC to consider the evidence as a whole to determine if applicant's specimen associates his mark with his charity bracelets so as to "identify and distinguish the goods."  citing Bellsouth, 60 F.3d at 1569; see also Damn I'm Good, Inc. v. Sakowitz, Inc., 514 F. Supp 13587 (S.D.N.Y. 1981).