Monday, January 14, 2019

Trademark Use -- Some Websites Just Won't Do

In this age of web-based product marketing and sales, the Federal Circuit provides a reminder that a web page may not suffice as an acceptable specimen to establish use of a trademark with a product.

In order to constitute a valid trademark, and to register the trademark, the mark must be used on or with a product. U.S. trademark law provides for three primary ways in which a trademark can be used with a product so as to permit registration: it can be placed directly onto the product (including applied to tags or labels affixed to product), it can be placed on a container of the product, or it can be placed on a display (for example, a point of sale display) associated with the product.

At times it may be difficult to place a trademark on a product, particularly when the product is sold in bulk, or when the mark primarily appears with the product on a web page. But care must be taken when a web page becomes the primary or sole method by which a mark is displayed with a product. The question becomes whether the web page is a true point of sale display or whether it represents mere advertising.

Today's opinion from the Federal Circuit re-emphasizes the rule that a web page that constitutes mere advertising is not an acceptable use of a trademark so as to permit registration. The opinion explains that the particular trademark applicant manufactured fabric in bulk for use in the manufacture of apparel. The applicant's mark was not affixed to the bulk fabric but, rather, appeared on its web page along with a description of the fabric's features. In addition, the applicant added the following language to its web page: the text “For sales information:” followed by a phone number and email address.

Nowhere on the web page was there information concerning pricing, minimum quantities, payment options, shipping information, or any other information permitting purchase of the bulk fabric.

The appellate court determined that a web page that merely provides a phone number or e-mail address for sales information, and with no other information permitting a buyer to purchase the goods, is not an acceptable display for trademark registration purposes. Rather, it is merely an advertisement. The court reasoned that if a prospective buyer was required to obtain necessary purchasing information via a phone call or e-mail contact, then the purchasing information would be acquired off of the display rather than within the display. The court explained:
“if virtually all important aspects of the transaction must be determined from information extraneous to the web page, then the web page is not a point of sale.”
And if the web page is not a point of sale, then use of the mark with the product description on the web page does not constitute an acceptable specimen, and is not an acceptable use allowing registration of the trademark.

So the lesson is this: if a trademark user wants to rely on its website to prove use of its mark, then the website needs more than a mere phone number or e-mail address to allow detailed sales information. The website needs to provide some basic purchasing information, such as price, minimum order quantities, payment options or shipping information.

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