We all know that web pages often serve as retailers. With that in mind, an intellectual property attorney from Turkey asked me a great question at the INTA 2016 conference in Orlando: “Can showing products online be enough to show use of a trademark in the United States?”
Fortunately, U.S. trademark guidelines for the U.S. Patent and Trademark Office (PTO) and decisions of the TTAB have adapted to reflect the marketplace. According to the Trademark Manual of Examining Procedure (TMEP):
A web page that displays a product can constitute a “display associated with the goods” if it (1) contains a picture or textual description of the identified goods; (2) shows the mark in association with the goods; and (3) provides a means for ordering the identified goods.
TMEP 904.03(i). The critical point is that the website that displays the trademark must provide a means of ordering the product. In contrast, if the trademark owner only indirectly suggests that goods are for sale through a “Contact Us” page, a PTO Examining Attorney — and potentially the Trademark Trial and Appeal Board (TTAB), if you had to and tried to appeal a PTO final office action — would consider the web page a mere advertisement which, by definition, does not show “use” in interstate commerce.
The TMEP is silent on any distinction between a U.S.-based company and a foreign company’s web page use of a trademark. Perhaps, from the perspective of my colleague in Turkey, or in any other country outside the United States, a mere ordering page might not be enough. I would suggest that if the website provides both an order page to purchase the goods (on a page which shows the trademark at issue) and also an option to pay in U.S. dollars, that would fortify the trademark owner’s position that the trademark is being used in interstate (that is, U.S.) commerce. That is, with the U.S. dollar option, it would emphasize that the goods are for sale in the U.S.
Answering questions is a pleasure; it’s always an opportunity for me to learn more and clarify, as well. If you have any questions or comments, please navigate to our “Contact Us” page and send us a message!
