We have some clients that sell goods to industry, not the general public. They advertise on their website but do not sell through their website, nor is there any brick and mortar place their goods are sold. I would like to see this sitation addressed in the examination guidelines.
Webpage Specimens as Displays Associated With the Goods
On behalf of a foreign client that does not necessarily sell its goods directly to consumers in the United States, or through ordinary retail outlets, we question why "Contact Us" or "Where to buy" tabs that provide contact info for resellers, wholesalers or distributors but do not provide a direct link to the company for purchasing are always inadequate as evidence that the website is not used as a means for purchasing ...more »
If the "where to buy" tab links a page with specific retailer links, including a screen shot of that page should be sufficient.
Another means for ordering (other than a Shopping Bag or Cart) can be provided through online "Inquiry Forms," particularly for technical goods for which the customer must provide product specifications or must inquire about the product specifications described on the webpage before making a purchase decision. Such forms should be deemed to constitute a "means for ordering" the goods, since such inquries are ofte the ...more »
A telephone number or e-mail address that is posted on a website in association with goods (particularly highly technical goods) should be acceptable as a means for placing an order. In the Valenite case, a number for the Customer Service Group provided a sufficient means to qualify the website as a point of purchase display. As expressed by one of our clients, "no matter how the telephone number is shown on the website, ...more »
IBM thanks the United States Patent and Trademark Office (“Office”) for the opportunity to provide input and comments regarding Draft Examination Guide for Webpage Specimens as Displays Associated with the Goods (“Draft Guide”). IBM uses webpage specimens to show use of IBM trademarks in association with services, and less frequently to show use of IBM trademarks in association with goods. Webpage specimens play an ...more »
Hitachi appreciates the opportunity to provide comments on the draft Examination Guide on Webpage specimens. In comparison to specimen requirements in most countries around the world, the USPTO specimen criteria are very strict. Many companies offer products and services not only to the general public but also to industrial. Therefore, it would be helpful to include additional information in Examination Guide taking ...more »
The last bullet point states: • Webpage is not acceptable for goods given the presence of third party goods and marks therefor (e.g., “Cuisinart” and “Polo by Ralph Lauren”). The reason the webpage is not acceptable for goods is not because third party marks appear on the page, but because Macy's is not, in fact, the source of the goods shown. This should be revised to something like "webpage is not acceptable for goods ...more »
Please consider allowing a sequence of screenshots for showing the three elements listed under "B. Requirements." Splitting content onto different pages is not uncommon and purchasers readily understand the relationship of the pages. For example, in the case of downloadable software, the detailed description of the goods may be on one page with a link that says something like "select version." Following the link will ...more »
For a term that is not defined in the Trademark Act, the meaning of "display" has undergone a long transition. One of my foreign clients comments that she does not understand why, in general, catalogs, websites, facdt sheets and brochures are not accepted as "trademark use" for registration purposes, even though the display of a trademark in such materials would constitute infringing use of those trademarks. She says ...more »
If a page header prominently displays the mark, it should qualify as "sufficiently near". Also, as page headers appear on all cite pages, usage in a page header increases prominence.
Favicons appearing in the url heading should be discussed. I believe that they should qualify as prominent usage, because they directly associate the mark with the goods, and create a strong impression in the minds of purchasers.
In Section I(A)(1), it states "It should be noted that a webpage showing a picture of the packaging of the goods with the mark appearing on the packaging is an acceptable specimen and does not require a display analysis. " It should be amended as follows (IN CAPS)to reflect that not only a photo of the packaging is sufficient, a photo of the goods bearing the mark is also acceptable: "It should be noted that a webpage ...more »
I have found what seems like an interesting recent development in the TTAB’s handling of statements of “mere puffery” as laudatorily merely descriptive marks and the possible overruling of this practice by the CAFC in the recent Duopross case involving the SNAP SIMPLY SAFER mark (Duopross Meditech Corp. v. Inviro Medical Devices, Ltd., 103 USPQ2d 1753, 1759 (Fed. Cir. 2012) ), TTABlogged HERE. While preparing a response ...more »
The following are the comments of the law firm of Erik M. Pelton & Associates, PLLC® of Falls Church, Virginia (“EMP&A”), in response to the Draft of Examination Guide: Webpage Specimens as Displays Associated with the Goods. Over the last decade, EMP&A has represented hundreds of clients, including many small businesses, in U.S. trademark prosecution, maintenance, and disputes. EMP&A clients have been issued more than ...more »