A divided Board panel affirmed a refusal to register the mark
CASALANA for "knit pile fabric made with wool
for use as a textile in the manufacture of outerwear, gloves,
apparel, and accessories," on the ground that applicant failed
to submit a proper specimen of use. Applicant contended that its
website qualified as a display associated with the goods, but the
panel majority disagreed. In re Siny Corp., Serial No. 86754400
(August 17, 2017) [not precedential] (Majority opinion by Judge
Anthony R. Masiello).
Applicant's webpage depicts the CASALANA mark adjacent one
of eleven choices of fabrics, and it includes an explanation of the
nature of applicant's goods. It also provides an informational
link and, near the bottom of the webpage under the heading
"For sales information" a phone number and an email
address. The Board assumed that the phone number would connect a
prospective customer with sales personnel.
The panel majority framed the question thusly: "whether the
purported point of sale display provides the potential purchaser
with the information normally associated with ordering products of
that kind." In re Anpath Group, Inc. 95 USPQ2d 1377,
1381 (TTAB 2010).
The Board cited In re U.S. Tsubaki, Inc., 109 USPQ2d 2002
(TTAB 2014), for the proposition that "a simple invitation to
call applicant to get information - even to get quotes for placing
orders - does not provide a means for ordering the product."
Only after obtaining such information could the purchaser place an
order.
Here, the panel majority found it implausible that the business
representative of a manufacturer would be prepared to place an
order on the basis of the information on the specimen of use.
"It would be impossible for a customer to make an informed
decision to choose the CASALAN brand from among the other goods
offered on the webpage." Moreover, there was no pricing
information, or information regarding weight and thickness, or the
minimum order size, or how a purchaser would pay, or how the goods
would be shipped. The majority found it unlikely that customers
would be prepared to buy the goods without inspecting a sample. In
short, customers would need a great deal more information in order
to make a purchasing decision.
The majority distinguished In re Valenite, Inc., 84 USPQ2d
1346 (TTAB 2007), where substantial technical information was
provided at the website and where a telephone call was the final
step in the purchasing process. There the applicant provided a
verified statement that orders were indeed placed over the phone.
[The majority noted that an applicant would be "well
advised" to provide the Office with additional information on
how purchases are actually made through a website].
Judge Angel Lykos dissented, urging that a more flexible approach
be taken in light of the "increasing prevalence in the
marketplace of direct-to-consumer e-commerce sites." In her
view, sufficient information was provided, as well as a mechanism
for placing an order. In this situation, one would expect prices to
be negotiable depending on the quantity and quality of the
fabric.
TTABlog comment: I agree with the dissent.
Let's get real here.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.