Frequently my clients are puzzled as to what kind of specimen to submit to the USPTO when trying to prove their “ bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” 15 USC §1127. A big question to resolve is whether the specimen you wish to submit will be rejected as mere advertising or be accepted as a point of sale display?
In the case of In re: Siny Corp, 2018-1077, the applicant sought to register the mark “CASALANA” for a type of woolen fabric for use in manufacturing textiles. The Federal Circuit Court’s affirmation of a USPTO refusal to register the mark is helpful, especially for those who primarily use their website to spread the word about their goods.
In this case, the applicant submitted as “proof of use in commerce” a copy of a webpage which contained the phrase “for more information” and a telephone number. The Court agreed with the USPTO that such a reference was inadequate to enable a consumer to make a purchase decision and thus did not qualify as proof of use of the mark in commerce. Even though in this case the purchaser of the textiles would likely be a commercial customer who would require more direct contact with the manufacturer, the Court found that Siny Corp’s simple invitation “to call” was insufficient to meet the proof of use test. The Court acknowledged that to qualify a specimen need not contain all information necessary to enable a consumer to purchase the goods online. However, a specimen should have some information to allow the consumer to decide whether further inquiry would be appropriate. Such references could include: the price or range of prices, acceptable methods of payment, minimum order size and delivery details.
In the end, deciding whether your specimen will meet the test is a fact specific question. Best to keep this in mind as you develop your website so that it includes the kinds of information which will enable your mark to be considered by the USPTO as being used in interstate commerce.