The Journal of The DuPage County Bar Association

Back Issues > Vol. 28 (2015-16)

Demonstrating “Use” Of Marks To The USPTO
By Jefferson Perkins

The client wants to “trademark” its “brand.” “Brand” is an important word in marketing, but it has no clear definition in
trademark law. The client’s “brand” could be a “trademark” that is used to identify the source of goods, a “service mark” that is used to identify the source of services, both of these things, or merely a trade name that identifies the company, with no or insufficient reference to any product or service. In general1 it is not possible to get a federal registration for a mark unless it identifies a source of goods or services.

If the client uses “trademark” as a verb, it’s another warning signal. The client may believe that trademark rights are
secured by registration. This is true in many foreign countries, but it mostly is not true in the United States, where trademark rights primarily are acquired by use. Indeed, a domestic applicant will have to demonstrate such use before receiving a federal registration at all.2 But not all uses of the client’s mark are “uses” that will support the mark’s federal registration. This article explores the sorts of “uses” that will.

Trademarks. What “use” means in relation to trademarks, and what “use” means in connection with service marks, are quite different, and therefore will be discussed separately. The federal trademark registration act of 1946 (also called the Lanham Act)3 deems that a trademark is being “used” when it is placed in any manner on a. the goods themselves, b. on containers for the goods, c. on displays associated with the goods, or d. on tags or labels affixed to any of the foregoing, where the goods are “sold or transported in commerce.”4

Therefore, where the client is selling widgets under the mark, one way to “use” a trademark is to print, stamp or mold it right on the widget itself. To supply a specimen of such use to the United States Patent and Trademark Office (USPTO), one takes a digital photograph of the widget5 and uploads it to the USPTO Trademark Electronic Application System (TEAS) website6, either in conjunction with an electronically filed Application for Registration, or an electronically filed Statement of Use. (The USPTO still accepts paper pleadings and photographs by mail.7)

More commonly, a trademark will appear on a container or other packaging for the widgets, or on a label or tag somehow affixed to such packaging or the widgets themselves. A digital photograph of any of these ought to suffice as an adequate specimen of use, supposing that requirements for “use in commerce” are met.

A last way to demonstrate “use” of a trademark is to submit a specimen of a “display associated with the goods.” The Lanham Act was passed in 1946 and as originally contemplated, a “display associated with the goods” meant a physical point of purchase display such a shelf talker, menu8, banner or window display.9 In 1968, The Trademark Trial and Appeal

Board (“TTAB”) defined a “display associated with the goods” as a “conspicuous, eye-catching assemblage of goods which leads to or induces sales of the merchandise so displayed.”10 The TTAB demanded a close physical association with the goods such that a prospective purchaser would associate the mark with the goods.11 As time went on, the TTAB moved away from requiring that the display be in close physical association with the goods, as long as the display presented sufficient information and means for the purchaser to buy them.

For example, a trade show booth was considered a display associated with the goods, where the booth also operated as a sales counter for taking orders.12

But a large volume of goods are now bought and sold online, and the web pages at which those sales take place can often meet the legal requirements of a “display associated with the goods.”13 Not just any web page discussing or advertising the goods will do, however. A website page will suffice as a “display associated with the goods” if it has a means for ordering the product, and includes the mark in a manner that associates the mark with the product.14 The provision on a web page or a catalog page of information useful to a customer in making a purchase, such as quantity and price, will often be considered in determining whether the submitted specimen is a “display associated with the goods.”15 The USPTO will ask whether the website, as a purported point of purchase display, provides the potential purchaser with the information normally associated with products of like kind.16 The mark should be displayed sufficiently prominently that consumers will recognize it as a trademark17, and the inclusion of the trademark in the web page’s url or on the navigation tabs is not going to be enough.18 The website page should have either a picture of the goods or a textual description of same,19 preferably both. The means for ordering the product should include either a telephone number that is expressly described as being used for ordering the product,20 or other information necessary to order the goods21 (commonly linked to the page using an “add to cart” button or the like).22

A website that does not have these minimum criteria is likely to be rejected as a specimen.23 It will join many other common uses of marks by businesses that promote brand awareness, but aren’t trademark “uses” recognized by the USPTO – such as appearance in or on brochures24, fact sheets25, advertisements26, flyers, instruction sheets, packing invoices27, “freebie” promotional items28 and business cards.

Sometimes, a page from a print catalog can amount to a “display associated with the goods.”29 Criteria similar to those used to judge web pages apply. There must be some description or picture of the goods, the mark has to be associated with (such as being placed near the picture of) those goods, and there must be some method for the customer to place an order30 – typically a telephone number, mailing address or email address for placing orders. A catalog that omits pricing and merely refers the customer to a sales office31 is usually not going to be considered a “display associated with the goods.” Catalogs have to have the above criteria or they likely will be dismissed by the USPTO as mere advertising.32

Service Marks. According to the Lanham Act, a mark is used in connection with services when it is used or displayed in the sale or advertising of the services.33 Notice that while use in “advertising”, without more, is insufficient to demonstrate “use” of a trademark to the USPTO, it is one of the principal ways in which “use’ is demonstrated for a service mark.

Acceptable specimens may include newspaper and magazine advertisements, brochures, billboards, handbills, direct-mail leaflets, and menus (for restaurants).34 In some instances, company letterhead or a business card may be an acceptable specimen, if it creates an association between the mark and the services.35 Some letterhead designs will do this, and some won’t.36 But a copy of an actual letter on the letterhead will be acceptable, if the body of the letter at least indicates the field or service area in which the mark is used.37 A common failing of service mark specimens is that they do not create a sufficient association of the mark with the services for which registration is sought.38 For a trademark as used on a widget, it’s relatively straightforward – put a picture of the widget on the web page, and perhaps a short title telling the customer what the widget is, and one has done all that is necessary to associate the mark with the goods. But some advertisements for services are so vague that the viewer cannot reasonably discern the nature of the services for which the applicant desires a registration.

“Use in Commerce”. While the commerce clause of the US Constitution has been broadly interpreted in other legal areas so as to cover virtually any activity, the USPTO and trademark case law have demanded a stricter test. The Lanham Act defines “commerce” as “all commerce which may lawfully be regulated by Congress.”39 Nonetheless, it remains the law that purely intrastate uses of trademarks and service marks will not entitle them to federal registration. The Applicant must demonstrate some connection to commerce between at least two states, or commerce between any of them and a foreign country.

In conjunction with filing either an application for registration on an actual-use basis, or later filing a Statement of Use in an intent-to-use application, the Applicant has to furnish to the USPTO (1) a date of first use of the mark in connection with the goods and services, and (2) a date of first use of the mark “in commerce” with such goods and services.40 These dates do not have to be the same. For a trademark, the date of first use will be no later than the first time the product was transferred to a customer, such as a first ship date. The date of first use “in commerce” can be the first to happen of (a) the purchase of the product by an out of state or foreign customer, even where the purchase was made locally, or (b) the shipment of a product out of state or to a foreign country. But a shipment of goods from an out-of-state manufacturer to the trademark owner (for eventual redistribution to the owner’s customers) is not “use in commerce”.41

Relative to a service mark, for a date of first use to occur, the service must actually have been rendered to a customer; mere advertisement of the service isn’t enough.42 A date of first use “in commerce” may occur if (a) the service is rendered across state lines or between the US and a foreign country, as might happen if a customer in another state remotely accesses the applicant’s server in the course of rendering the service; or (b) the service is rendered in each of at least two states; or (c) if the service is rendered locally to a customer whose residence is in another state.43 This last method can be used by local businesses, such as physicians and restaurants, if they can ascertain, as by reviewing billing records or credit card receipts, that a portion of their clientele has out of state residences. It even suffices if the service was rendered in a foreign country to US customers.44

Conclusion. The way businesses use marks in today’s economy continues to expand. Enacted in 1946, the Federal Trademark Act has not really kept up with the changes, even though it has been amended twice and has been liberally interpreted on numerous occasions. But federal registration of a client’s mark nonetheless confers powerful benefits.

1. The US Patent and Trademark Office also grants registrations for certification marks and collective marks, but these are less common and are outside the scope of this article.
2. J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, 4th Ed. (hereinafter: “McCarthy”) § 19:1.25.
3. Title 15, U.S.C.
4. 15 U.S.C. § 1127.
5. Trademark Manual of Examining Procedure (hereinafter, TMEP) § 904.03(b) (April 2014).
6. http:/www.uspto.gov/trademarks/teas
7. 37 C.F.R. §§2.190(a), 2.195(a), 2.195(a)(2).
8. In re Marriott Corp., 459 F.2d 525, 527, 173 U.S.P.Q. 799 (C.C.P.A. 1972).
9. TMEP § 904.03(g).
10. In re Castleton China, 156 U.S.P.Q. 691 (T.T.A.B. 1968).
11. In re Mautz Paint & Varnish Co., 157 U.S.P.Q. 637 (T.T.A.B. 1968)
12. In re Shipley Co., 230 U.S.P.Q. 691 (T.T.A.B. 1986).
13. In re Dell, Inc., 71 U.S.P.Q.2d 1725, 2004 WL 1942043 (T.T.A.B. 2004)
14. In re Sones, 590 F. 3d 1282, 93 U.S.P.Q.2d 1118 (Fed. Cir. 2009).
15. E.g., In re Anpath Group, Inc., 95 U.S.P.Q.2d 1377, 1381, 2010 WL 1946272 (T.T.A.B. 2010).
16. In re Anpath Group, Inc., 95 U.S.P.Q. 2d 1377, 1381, 2010 WL 1946272 (T.T.A.B. 2010).
17. In re Morganroth, 208 U.S.P.Q. 284, 287 - 288 (T.T.A.B. 1980); In re Quantum Foods, Inc., 2010 WL 1720595, *4 (T.T.A.B. 2010).
18. See, e.g., In re Roberts, 87 U.S.P.Q.2d 1474, 1479 – 80 (T.T.A.B. 2008).
19. In re Sones, 590 F.3d 1282, 1288-1289, 93 U.S.P.Q.2d 1118, 1123-1124 (Fed. Cir. 2009); TMEP 904.03(i).
20. See TMEP § 904.03(i)(C)(2).
21. In re Quantum Foods, Inc., 2010 WL 1720595, *5 (T.T.A.B. 2010); In re Osterberg, 83 U.S.P.Q.2d 1220, 1224 (T.T.A.B. 2007).
22. TMEP § 904.03 (i)(C)(1).
23. In re Quantum Foods, Inc., 2010 WL 1720595, *6 (T.T.A.B. 2010); In re U.S. Tsubaki, Inc., 109 U.S.P.Q.2d 2002 (T.T.A.B. 2014).
24. In re Settec, Inc., 80 U.S.P.Q. 2d 1185, 2006 WL 1706430 (T.T.A.B. 2006).
25. In re Mediashare Corp.,143 U.S.P.Q.2d 1304, 1997 WL 413904 (T.T.A.B. 1997).
26. In re International Paper Co., 153 U.S.P.Q. 424 (T.T.A.B. 1967).
27. Application of Chicago Rawhide Mfg. Co., 455 F.2d 563, 173 U.S.P.Q. 8 (C.C.P.A. 1972).
28. Paramount Pictures Corp. v. White, 31 U.S.P.Q.2d 1768 (T.T.A.B. 1994).
29. Land’s End, Inc. v. Manbeck, 797 Fed. Supp. 511, 514, 24 U.S.P.Q.2d 1314 (E. D. Va. 1992)
30. TMEP § 904.03(h).
31. In re Anpath Group, Inc., 95 U.S.P.Q.2d 1377, 1381, 2010 WL 1946272 (TTAB 2010).
32. In re Drilco Industrial, Inc., 15 U.S.P.Q.2d 1671 (T.T.A.B. 1990); In re Mediashare Corp., 43 U.S.P.Q. 2d 1304, 1997 WL 413904 (T.T.A.B. 1997);  Land’s End v. Manbeck, 799 F.Supp. 511, 24 U.S.P.Q.2d 1314,
1316 (E.D. Va. 1992).
33. 15 U.S.C. § 1127.
34. TMEP 1301.04.
35. TMEP 1301.04(c).
36. TMEP 1301.04(c).
37. TMEP 1301.04(c); In re Monograms America, Inc., 51 U.S.P.Q.2d 1317, 1319 (T.T.A.B. 1999).
38. In re Adair, 45 U.S.P.Q.2d 1211 (T.T.A.B. 1997)
39. 15 U.S.C. § 1127.
40. 37 C.F.R. § 2.34(a)(ii), (iii).
41. Avakoff v. Southern Pacific Co., 765 F.2d 1097 (Fed. Cir. 1995).
42. The Greyhound Corporation et al. v. Armour Life Insurance Company, 214 U.S.P.Q. 473, 1982 WL 50420 (T.T.A.B. 1982).
43. In re Gastown, Inc., 326 F.2d 780, 880, 140 U.S.P.Q. 216 (C.C.P.A. 1964).
44. International Bancorp, LLC v. Societe de Bains de Mer et du Cercle des Estrangers a Monaco, 329 F.3d 359, 366, 66 U.S.P.Q.2d 1705 (4th Cir. 2003).

Jefferson Perkins is the principal of Perkins IP Law Group LLC. He has practiced intellectual property law for 32 years, in DuPage County for the last eleven. Previously Jeff practiced in Chicago and Dallas. His practice extends to all phases of acquiring, defending, asserting and licensing patents, trademarks, copyrights and trade secrets, both domestically and internationally. He received BSEE and BS LAS degrees from the U of I at Urbana-Champaign and a JD (Distinction) from
the John Marshall Law School.

 
 
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