Last month the United States Patent and Trademark Office issued Examination Guide 1-13 with information for submitting webpages as specimens. Specimens are concrete examples of how a trademark is used to identify a good or service. They must be submitted as a condition for most trademark registrations and periodically to maintain a registration. Because so many companies have websites, screen shots of webpages have become a very popular way of submitting a specimen.
Examination Guide 1-13 offers guidelines as to what makes a webpage qualify as an acceptable specimen. The guidelines emphasize the distinction between mere advertising material and point-of-sale displays, with only the latter being an acceptable specimen. In other words, if the webpage does not offer a direct means by which to purchase the goods or services, the webpage will not qualify as an acceptable specimen.
There are 3 elements that a webpage must have in order to constitute an acceptable specimen:
1. The website must include a picture or a description of the goods or services. In general, the more sophisticated the product, the more detailed the description needs to be.
2. The website must show the trademark (whether the trademark is a word mark, logo, or otherwise) in sufficient proximity to associate the trademark with the goods or services. The more prominently the trademark is displayed and the closer it is to the goods or services, the better. Although not strictly required, it is generally good practice to use the appropriate trademark symbol (e.g. ® or ™).
3. The website must provide information necessary to directly purchase the goods or services, such as a link to a shopping cart or a telephone number to call to place an order. Merely providing a general telephone number for the company or “where to buy” information that lists retailers is insufficient. The consumer needs to be able to order the goods or services directly in order for the website to qualify as an acceptable specimen.
It is also important that the trademark be distinguished from the name of the company. This is a requirement for all trademarks, not just website specimens, but the problem is frequently encountered on websites. Often the name of the company is also a trademark. This is perfectly OK. However, the USPTO will not register the company’s name as a trademark unless it is clear that they are two different things. In other words, if the “trademark” is only used as the company’s name and not separately to identify the goods or services the company is selling, the USPTO will not register it. Therefore, if a website is submitted as a specimen, it is important that it display the trademark as more than just the company’s name.
Examination Guide 1-13 offers several good examples of acceptable and unacceptable webpages. It can be found on the USPTO’s website at http://www.uspto.gov/trademarks/resources/Trademark_Exam_Guides.jsp