Trademark Specimens of Use and Websites

In examining a trademark or service mark application the United States Patent and Trademark Office (“USPTO”) often analyzes a website specimen as a catalog.  However, this often creates a challenge and interpretational problem, because websites are often developed or organized based on user preferences. 

The USPTO will typically require that a website specimen of a mark display a picture that is sufficiently close enough to the mark to satisfy section 904.06 (a)- (b) of the Trademark Manual of Examining Procedure (TMEP).  However, this strict interpretation of websites as catalogs, and adherence to TMEP 904.06 (a)-(b) ignores the fact that the mark is still serving as indicator of source. 

The USPTO created TMEP 904.06(a)-(b) based on the Federal Circuit’s Ruling in Land’s End Inc. v. Manbeck.  However, in 2009, the Federal Circuit overturned the USPTO’s strict application of TMEP 904.06 (a)-(b). In In re Sones, the Federal Circuit reiterated that the test for an acceptable website-based specimen, just as any other specimen, is simply that it must in some way evince that the mark is associated with the goods and serves as indicator of source. 

Thus, the key is whether or not the website using the mark serves as a point of sale and the goods or services are recognizable from the textual description provided.  The In re Sones ruling should help garner trademark or service mark protection for many individuals that utilize websites as their storefront. 

If you have any concerns or questions about filing a trademark application, representation in a Trademark Trials and Appeals Board Proceeding, and/or litigating the validity of infringement of a mark, then feel free to contact us.

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