| 1. Holding | | | | and the specimens do not contain sufficient ordering |
| The USPTO Trademark Trial and Appeal Board | | | | information as required under Dell." The examiner also |
| (hereinafter "TTAB" or "Board") has relaxed its | | | | noted (Examining attorney's appeal brief (citations |
| requirements for allowing website pages to be used | | | | omitted)): |
| as trademark specimens. | | | | However, the home page does not provide adequate |
| In In re Valenite, Inc., Serial No. 76482852, Trademark | | | | ordering information so Internet customers can easily |
| Trial and Appeal Board, 2007 TTAB LEXIS 71; 84 | | | | select and order the goods. There are no links to |
| U.S.P.Q.2D (BNA) 1346, July 31, 2007, the TTAB | | | | click on to select a good and place an order. Pricing |
| decided that the specialized nature of applicant's | | | | information is not present. There are phone numbers |
| goods made it infeasible to sell the goods in a | | | | and e-mail addresses listed on the home page. But |
| traditional online manner. The traditional online manner | | | | the mere presence of a phone number or mailing |
| uses an online shopping cart. The Board concluded | | | | address does not constitute sufficient information to |
| that the applicant's web page information, which | | | | order the goods. |
| included a customer service phone number that | | | | Applying Lands' End Inc. v. Manbeck, 797 F.Supp. 511, |
| provided technical information about the goods, and | | | | 24 USPQ2d 1314 (E.D. Va. 1992), and In re Dell, Inc., |
| the ability of the applicant to accept purchase of | | | | 71 USPQ2d 1725 (TTAB 2004), the Board held that |
| goods ordered via telephone calls to that customer | | | | the applicant's web page contained sufficient |
| service number, constituted information necessary to | | | | information to order applicant's goods, particularly |
| complete a sale. | | | | since the goods were specialized industrial products: |
| 2. Notation in Trademark Manual of Examining | | | | tools for power operated metal cutting machines, |
| Procedure (TMEP) | | | | and the customers would need technical assistance |
| The TMEP has incorporated the holding in Valenite in | | | | prior to placing an order. |
| TMEP 904.03(i), which now states that:a web page | | | | Specifically, the Board stated: |
| containing a link to an online catalog, along with a toll | | | | These are not products that can be ordered from a |
| free number and links to customer service and | | | | web page by clicking on an image of the product to |
| technical support, to be an acceptable specimen, | | | | add it to a shopping cart for checkout.... Further, the |
| where the goods were specialized industrial goods, | | | | term 'customer service' itself is broad enough to |
| and the record contained declaration evidence that | | | | encompass the service of allowing customers to |
| purchase of the goods requires careful calculation and | | | | order applicant's products by using the toll-free |
| technical knowledge, and that the online phone | | | | telephone numbers. |
| numbers were in fact used to order the goods. | | | | The Board concluded: |
| 3. Impact | | | | In the instant case, however, applicant's website, in |
| The holding in Valenite has four primary effects: | | | | addition to showing pictures of the goods, provides |
| 1. It allows applicants from anywhere in the world a | | | | an on-line catalog, technical information apparently |
| greater opportunity to show use of a trademark in | | | | intended to further the prospective purchaser's |
| commerce in the United States through use of a | | | | determination of which particular product to consider, |
| website. | | | | an online calculator and both a link to, and phone |
| 2. An applicant or registrant may be able to claim an | | | | number for, customer service representatives. |
| earlier priority date for a mark that is involved in an | | | | Therefore, applicant's website provides the |
| opposition or cancellation proceeding. | | | | prospective purchaser with sufficient information that |
| 3. It allows applicants to save money by showing use | | | | the customer can select a product and call customer |
| of the mark in the United States earlier in the | | | | service to confirm the correctness of the selection |
| registration process; for example, at the time of | | | | and place an order. |
| application filing. This lessens the need to file an | | | | 5. Author's Conclusion |
| amendment to show use, a statement of use, or an | | | | The holding in Valenite is a distinct change in the law |
| extension of time to file a statement of use. | | | | in the US trademark office that expands the |
| 4. Applications will proceed to registration faster, | | | | consideration of web pages as specimens to |
| because of less time waiting to obtain an acceptable | | | | demonstrate use of a mark in commerce. In |
| specimen in order to show use of the mark in | | | | particular, the Board gives the applicant more latitude |
| commerce. | | | | regarding associating a mark with goods and |
| 4. Prosecution Before the Examiner and the Board | | | | determining what constitutes sufficient ordering |
| The examiner had refused registration of the mark, | | | | information for specialized goods. |
| stating that it was "not associated with the goods, | | | | |