Last week, the United States Court of Appeals for the Federal Circuit reissued as “precedential” its opinion in In re: Siny Corp., 2018-1077 (April 10, 2019). Siny filed an application to register the mark CASALANA for woolen fabric used in apparel and accessories. The application was based on alleged commercial use under Section 1(a) of the Lanham Act, and as a specimen of use the applicant submitted a webpage printout. The webpage printout contained a small picture of the fabric and displayed the CASALANA mark underneath the picture. The webpage also displayed a phone number and an email address underneath the caption “For sales information.” The examiner rejected the application on grounds that the webpage specimen failed to show the requisite use in commerce to support the application.
Siny appealed to the Trademark Trial and Appeal Board, which affirmed the rejection of the application. The Board rejected Siny’s assertion that the webpage constituted a “point of sale” display, as would be required to establish trademark use. Specifically, the Board observed that the webpage specimen lacked many details a consumer would need to make a purchasing decision, such as minimum quantities required for purchase, accepted payment methods, and shipping options. Siny contended the absence of these details should not disqualify the webpage as a point of sale display because the goods at issue are industrial materials used in manufacturing, and therefore “the ultimate sales transaction may have to involve some assistance from Siny’s sales personnel.” The Board acknowledged this argument, but concluded that “while some details must be worked out by telephone, if virtually all important aspects of the transaction must be determined from information extraneous to the web page, then the web page is not a point of sale.”
On appeal, the Federal Circuit affirmed. The Court first explained that the use of a mark on advertising does not qualify as use on a display associated with the goods. The Court further explained that whether a particular specimen qualifies as a display is a question of fact, which it reviews for substantial evidence. Citing the Board’s analysis of the issue, the Court concluded that “the Board carefully considered the [webpage specimen] contents and determined, on the record before it, that the specimen did not cross the line from mere advertising to an acceptable display associated with the goods. We cannot say that the Board’s determination lacked substantial evidence.”
