How low can we go? An overview of “use in commerce” requirement in trademark registration

By Arlene Mu

For trademark registration and renewal, one needs to establish that the trademark is “used in commerce”. If you read my previous blog entry, you may have the impression that this is a very low standard. The standard is indeed low and it’s become lower and lower in recent years. However, the question remains, how low can it go? Can it fall so low that there is virtually no requirement at all?

Under the Lanham Act, “use in commerce” means that (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. In practice, USPTO requires applicants to submit a specimen to prove the association of goods and trademark. The acceptability of the specimen demonstrates the lower boundaries of the “use in commerce” standard. Although the trademark does not have to be in close proximity with goods, mere advertisement or promotion does not meet the criteria.

In 1992, one Federal District Court opened the door for a lenient reading of the standard for acceptable specimen by holding the use of a mark in a mail order catalog could qualify as a display associated with the goods. Lands End, Inc. v. Manbeck, 797 F. Supp. 511 (E.D. Va. 1992). Concerned that the trademark registration system could be misused to reserve trademarks following this decision, the USPTO adopted the catalog specimen policy. Now, applicants seeking to use a catalog specimen must show 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.

As e-commerce blooms, a webpage may also be considered an acceptable specimen as long as it provides information for ordering goods using the mark. The TTAB held that a webpage that displays goods and their trademarks, as well as provides for online ordering of such goods is, in fact, an electronic display associated with the goods. In re Dell Inc., 71 USPQ2d 1725 (TTAB 2004). Such uses are not merely advertising, because in addition to displaying the goods, they provide a link for ordering the goods.

In December 2009, the Federal Circuit further lowered the picture requirement for use of a webpage specimen of trademark use. In re Sones, 590 F.3d 1282 (Fed. Cir. 2009). The webpage displayed a “shopping cart” for online ordering, but with no product image. The USPTO rejected the applicant’s specimen for lack of product picture. The court reversed the USPTO decision and held that an acceptable webpage specimen only needed to describe the goods or provide an image.

However, a webpage that merely provides information about a good, but does not provide a means of ordering it, is viewed as promotional material and is not acceptable to show trademark use. In re Genitope Corp., 78 USPQ2d 1819,1822 (TTAB 2006).

Now, it seems that the only requirement for an acceptable specimen is that the webpage must provide ordering information. However, one must wonder: will this requirement be dropped as well?

The likely answer is no. The rationale for adopting a low criterion for trademark registration and renewal is to avoid creating artificial barriers to competition. However, an exceedingly low standard also affects competition because people may utilize the system as trademark reservation system to acquire trademarks without having any associated goods. Therefore, the current standard is the result of balancing of these two competing considerations.

This rationale becomes more obvious when comparing the interpretation of “use in commerce” in the trademark registration context with that in the unfair competition and trademark infringement context. Unfair competition and trademark infringement laws do not aim at preventing improper use of trademark registration, so they allow advertisements to be acceptable evidence of “use in commerce.” The Restatement (Third) of Unfair Competition recognizes advertisement as sufficient use of a trademark in commerce. RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 18 (1995). In addition, the Second Circuit recently reasoned that the “use in commerce” has a different meaning in trademark infringement context than in the registration requirement. Rescuecom Corp. v. Google Inc., 562 F.3d 123 (2d Cir. 2009). The court further urged Congress to clarify this statutory ambiguity. Thus, it is unlikely that courts or USPTO will further lower the bar for the registration requirement by adopting the same standard from unfair competition or trademark infringement context by eliminating the order information requirement. To the contrary, the USPTO will likely tighten up the “order information” requirement, because the Federal Circuit has eliminated the picture requirement for catalog or webpage specimen.

However, courts are not unaware of those unique situations where goods are so specialized in nature that providing a picture or online ordering function is impractical. The TTAB found a web page containing a link to an online catalog, along with a toll free number and links to customer service and technical support, to be an acceptable specimen, where the goods were specialized industrial goods. In re Valenite Inc., 84 USPQ2d 1346, 1349 (TTAB 2007). However, Valenite is the exception rather the rule, and TTAB suggests that it should not be interpreted as a change in practice of USPTO.

In sum, it is currently and will remain to be good practice, for trademark applicants not to start an online or catalog advertisement campaign before they can provide order information for that product. A low standard can still catch the unwary, so don’t take anything for granted.