by Scott Hervey
A basic prerequisite for the ownership and registration of a trademark is that the mark is “used in commerce.” The Trademark Act defines “use in commerce” as the bona fide use of a mark in the ordinary course of trade. Under the Act, a mark is deemed to be used in commerce when: (i) the mark is placed in any manner on goods, their containers, their displays, on the goods’ tags or labels and, in certain cases, on documents associated with the goods or their sale; and (ii) the goods are sold or transported in interstate commerce.
It would seem that establishing use in commerce is not that difficult, and most of the time this assumption is accurate. However there are instances where showing use in commerce can prove challenging. One example is the distinction the United States Patent and Trademark Office (“USPTO”) draws between displays and advertising material.
A display is allowable and acceptable evidence of use where it is associated directly with the goods offered for sale. Banners, menus, window displays and other items designed to catch the attention of prospective purchasers and induce them to make a purchase are all acceptable to show trademark usage. However displays don’t always have to be in close proximity to the goods. Given all of this, it stands to reason that advertisements would also be acceptable evidence of use. After all aren’t advertisements designed to catch the attention of prospective purchasers and induce them to purchase the goods? Then why is it that the USPTO refuses to accept advertisements an acceptable evidence of use.
The USPTO bases its refusal to accept advertisements as proper specimens of use on Section 45 of the Lanham Act. The Act states a mark must be placed on the goods or their containers directly, but relaxes this requirement and permits placement of the mark on a “displays” or “documents associated with the goods.” Interpreting whether a mark on a display or document satisfies the “use in commerce” requirement, the USPTO and the Trademark Trial and Appeal Board (“TTAB”) apply a narrow interpretation, insisting that there be a close physical association between the products and the displays, inasmuch as the consumer must be able to associate the mark on the display with the product. As such, the USPTO and TTAB take the following position with regard to advertisements: (1) the depiction of a mark in advertising is not a use in the trademark sense; and (2) a mark used in advertising is not physically associated with the goods.
The requirement that there be a close physical association between the good and the display or document originates from the common law notion of affixation which required that a trademark be "affixed,"or physically attached to the products so that the public would be able to associate the mark with the product. The Lanham Act, however, does not strictly follow the common law notion of affixation. The Act accepts as a proper specimen displays associated with the goods. Over time case law has expanded on what is considered a “display associated with the goods” resulting in a very thin and very fuzzy line between what is and isn’t acceptable as showing trademark use.
This expansion begin in Lands End, Inc. v. Manbeck, 797 F. Supp. 511 (E.D. Va. 1992). In that case the District Court reversed the TTAB and held that use of a mark in a mail order catalog can qualify as a display associated with the goods. Following the decision, the USPTO implemented a policy which allows a catalog to be an acceptable specimen showing trademark use where (1) the catalog specimen includes a picture of the relevant goods; (2) the trademark is sufficiently near the picture; and (3) the catalog contains information necessary to order the goods.
Following Lands End was the 1999 TTAB case of In re Hydron Technologies, Inc. 51 U.S.P.Q.2d 1531 (T.T.A.B. 1999) which held that a television infomercial is an acceptable specimen showing trademark use. In holding that the visual appearance of a slogan 3 times for a total of 9 seconds on an infomercial was sufficient trademark use, the TTAB found compelling the fact that the mark appeared in the infomercial in close association with images of the goods, and, like a catalog, the infomercial provided customers with the ability to purchase the goods.
Most recently, in In re Dell Inc, 71 U.S.P.Q.2d 1725 (T.T.A.B. 2004) the TTAB found that an internet website can be an acceptable specimen of use. The TTAB determined where the mark is displayed on a web page in close proximity to a picture of the goods and the web page contains information or means for ordering the goods, the use of the mark on the web page is trademark use and the web page is an acceptable specimen.
In each of the above cases, the crucial element which makes the specimen acceptable evidence showing trademark use is that there is a means of ordering the product. This was made clear in In re Genitope Corp., 78 U.S.P.Q.2d 1819 (T.T.A.B. 2006) where the TTAB rejected a web page as a specimen because it did not provide a means for ordering the product, but only indicated how a person could obtain more information on the product.
While the USPTO has expanded what it will accept as evidence of use to the modern day equivalent of “point of purchase” displays, the Restatement (Third) of Unfair Competition requires only that “the manner of use must be calculated to cause prospective purchasers to associate the designation with the goods, services, or business of the user.” In a sharp break with the USPTO and common law notions of fixation, the Restatement explicitly recognizes advertising as a method of trademark:
“Modern marketing techniques also rendered the affixation requirement obsolete with respect to trademarks for goods. Use of a designation in the various advertising media can now establish the designation’s significance as an identifying symbol as surely as its appearance on packaging or labels…. Under the rule as stated in this Section, use of a mark on point of sale displays, price lists, menus, or mail solicitations can also constitute use as a trademark, as can other advertising uses calculated to inform prospective purchasers of the association between the designation and the user or the user’s goods and services.”
Perhaps some day the USPTO will adopt the Restatement’s position and drop its strict adherence to the prohibition against advertisements. The Restatement’s position is more in line with modern consumer behavior and the role of brands in today’s society. Until such time, trademark practitioners will still have to deal with the USPTO’s hyper technical requirements. As such, best practices would dictate that trademark practitioners be more involved with a client’s initial advertising campaign and product roll-out to ensure that there is at least one acceptable specimen for the USPTO.