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Archived updates for Friday, December 17, 2004

Proving Trademark Use on the Internet

According to an article in the December 15, 2004 INTA Bulletin:

While it may be more difficult for a producer of goods to prove use through the Internet, it is not impossible. Printed advertisements for the goods, including Internet websites
that merely advertise the goods, are not acceptable to show use
[before the U.S. Patent and Trademark Office]. The website printout must contain photographs of the mark on the goods or their packaging for the website to qualify as a type of electronic catalog, as cited in Lands End v. Manbeck.

This case held that a printed paper catalog could qualify as proof of use of the mark on goods if

  1. the catalog contains a picture of the relevant goods;
  2. it shows the mark sufficiently near the picture of the goods to associate the mark with the goods, e.g., above, beside or below the picture; and
  3. there is information necessary to order the goods, e.g., a phone number, mailing address or email address. In the context of a website, it is quite probable that a “buy it now� or “add to shopping cart� button would also suffice for this third requirement.
Offering services via the Internet also constitutes use in commerce, since the services are available to a national and international audience who must use interstate telephone lines to access a website. For downloadable computer software, the applicant may also submit a specimen that shows use of the mark on an Internet website. However, such a specimen is acceptable only if it indicates that the user can download the software from the website (e.g., if the specimen shows a download button). If the website simply advertises the software without providing a way to download it, the specimen is unacceptable.

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Anonymous Anonymous said...

Thought you might be interested in my new blog:

I note your post from the INTA Bulletin about specimens of use.
The INTA articles are sometimes less than reliable.
Note the recent citable case In re Dell Inc., 71 USPQ2d 1725 (TTAB 2004) [Rule 2.56(b)(1) - trademark specimen of use]: . The Dell case seems to liberalize the specimen requirement for a product sold via the Internet.

Also in the Dec. 15 INTA bulletin, at page 11, the bulletin erroneously identfies the first REP published for opposition. The first one was actually published on Nov. 9, 2004, for the mark OSTEOSOFT. The VERSUS application was the first Section 66a application filed, but not the first published. Here is the text of Nov. 9 blog post:


First Section 66(a) Application Published Today!
Today, for the first time, a Section 66(a) Request for Extension of Protection was published for opposition. Reportedly, 22 more are in the queue for publication next Tuesday, November 16th.
Today's application is Serial No. 79000752, owned by Merck KGaA of Darmstadt, Germany, for the mark OSTEOSOFT for certain chemicals and pharmaceuticals. Carl Oppedahl, at Oppedahl & Larson's website, provides some interesting comments here regarding this application.

TTAB practitioners should note that the rules for opposing Section 66(a) differ in some important respects from those applicable to "non-Madrid" oppositions. Those differences are discussed in a paper that I co-authored with Ann Lamport Hammitte, entitled "TTAB Practice and the Madrid Rule Changes," published early this year in Intellectual Property Today.

For example, once a Notice of Opposition to a Section 66(a) application has been filed, the Notice may not be amended to add grounds for opposition after the opposition period ends. Thus, unlike in "non-Madrid" oppositions, a Section 66(a) opposer cannot wait for discovery to determine whether a ground such as fraud is available. On the other hand, FRCP 11, applicable to opposition proceedings pursuant to Trademark Rule 2.116(a), requires that an attorney or unrepresented party have a good faith factual and legal basis for the allegations made in a pleading. The TTAB practitioner thus may face a drafting dilemma in preparing the Section 66(a) Notice of Opposition.


John L. Welch
FOLEY HOAG LLP | 155 Seaport Boulevard, Boston Massachusetts 02210 |

December 20, 2004 12:25 PM  
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