Federal Circuit clarifies rules on specimens

United States of America
In In re Sones (Case 09-1140, December 23 2009), the US Court of Appeal for the Federal Circuit has held that the US Patent and Trademark Office (USPTO) had improperly rejected a specimen of use and had used an incorrect legal standard for evaluating the acceptability of an internet specimen of use. 
Michael Sones filed an intent-to-use application for the registration of the mark ONE NATION UNDER GOD for “charity bracelets”. The USPTO approved the application for publication and subsequently issued a notice of allowance. Within six months of the notice of allowance, Sones submitted a statement of use which included a specimen of use of the mark. The specimen consisted of two pages from a website offering products for sale under the mark ONE NATION UNDER GOD. The products for sale under the mark were described, but no photograph of the goods was shown. 
The USPTO rejected the specimen on the grounds that it “[did] not show a picture of the goods in close proximity of the mark”. As support for the rejection, the USPTO cited Section 904.03(h) of the Trademark Manual of Examining Procedure (TMEP), which states that a web catalogue or webpage must contain a picture of the relevant goods. The Trademark Trial and Appeal Board affirmed the refusal of the specimen. 
In reversing the USPTO, the Federal Circuit held that the USPTO had mistakenly required that a website specimen have a picture of the goods to be accepted. The Federal Circuit highlighted the rationale for requiring specimens of use - namely, to ensure that an applicant uses the applied for mark in commerce. As the Federal Circuit stated, this requirement is satisfied if the specimen shows use of the mark as used on, or in connection with, the goods. 
The Federal Circuit found that Section 904.03(h) of the TMEP was promulgated based on a misunderstanding of Lands’ End Inc v Manbeck, a 1992 district court case which addressed a specimen of use from a mail order catalogue. The USPTO based its requirements for pictures for website specimens on the holding in Lands’ End. While the specimen found acceptable in Lands’ End did include a photograph of the products, the Federal Circuit stated that the picture was not the sole reason why the specimen was accepted. Rather, the crucial factor in Lands’ End was the prominent use of the mark at a point of sale location. Thus, contrary to the USPTO’s understanding of Lands’ End, a photograph is not mandatory for specimens from website catalogues. The Federal circuit noted that while the TMEP is instructive, it is not established law.        
For good measure, the Federal Circuit examined the TMEP for specimen requirements for brick and mortar stores, and found that there is no rule that specimens of use for brick and mortar stores must have a photograph. Instead, the test is whether the specimen describes the goods in sufficient detail in relation to the mark. According to the Federal Circuit, since ordering from a website is the equivalent of picking up a box in a store, and boxes do not need a photograph to serve as a specimen, neither should websites. The Federal Circuit pointed out that a photograph may be a consideration to determine whether a specimen is acceptable, but it is not a requirement. 
Therefore, in view of In re Sones, a picture is not a mandatory requirement for a website-based specimen of use. The test is simply whether the specimen in some way evinces that the mark is associated with the goods as an indicator of source. 

Leo Loughlin, Arent Fox LLP, Washington DC 

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