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.