Preface
This brief note is not legal advice and is for educational purposes only.
At the time that you file a trademark (mark) application it can be based on:
- Actual use of the trademark at that time in which case you submit a specimen of actual use in commerce, or
- Intent to use the mark in the future in which case at some later time (up to 3 years maximum (by buying time extensions)) you submit a specimen of actual use in commerce and an allegation of use (also called Amendment to Allege Use (AAU) if filed before publication, or Statement Of Use (SOU) if filed after publication).
“actual use in commerce”
In simple terms it means actual use in “interstate” or “foreign” (outside US) commerce, NOT intrastate (e.g. within a single state).
Specimens
We often have clients ask about websites showing actual use. Here are some considerations.
- First, it must show actual use of the mark associated with the goods. For example, a catalog page showing an item will likely not suffice for a specimen unless it shows ordering information because a display alone does not show use in commerce. See Trademark Act Section 45, 15 U.S.C. §1127; 37 C.F.R. §2.56(b)(1); and TMEP §§904.03(h)-(i).
- Second, an advertisement describing the product even with an Internet address and/or mailing address and a telephone number will likely not suffice for a specimen unless there is an offer to sell and instructions on how to order the product (think - use in commerce). See In re MediaShare Corp., 43 USPQ2d 1304 (TTAB 1997) (fact sheet did not to qualify as a catalog under Lands’ End, where the specimen failed to show the mark near a picture of the goods, and there was no information on how to order the goods).
- Third, a web page or web catalog, or a similar specimen is very likely to be acceptable to show trademark use as a display associated with the goods only if it includes:
- A picture of the goods,
- The mark appears sufficiently near the picture of the goods so that the customer will associate the mark with the goods, and
- There is information on how the customer can order the goods (e.g. order form, price list, instructions for ordering, etc.) or a visible weblink to order the goods.
See Lands’ End, Inc. v. Manbeck, 797 F. Supp. 511, 514, 24 USPQ2d 1314, 1316 (E.D. Va. 1992); In re Dell Inc., 71 USPQ2d 1725, 1727-1729 (TTAB 2004); In re MediaShare Corp., 43 USPQ2d 1304 (TTAB 1997); and TMEP §§904.03(h), (i).
Conclusion
You can use websites for specimens to show actual use in commerce if done right.
