In Re: Siny Corp. , 920 F.3d 1331 ( 2019 )

NOTE : This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: SINY CORP.,
Appellant
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2018-1077
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Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in No.
86754400.
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Decided: January 14, 2019
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DANIEL KATTMAN, Reinhart Boerner Van Deuren s.c.,
Milwaukee, WI, for appellant. Also represented by HEIDI
R. THOLE.
THOMAS W. KRAUSE , Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
appellee Andrei Iancu. Also represented by CHRISTINA J.
HIEBER, MARY BETH WALKER.
______________________
Before PROST, Chief Judge, LOURIE and STOLL,
Circuit Judges.
PROST, Chief Judge.
2 IN RE: SINY CORP.
Siny Corp. (“Siny”) appeals a decision of the Trade-
mark Trial and Appeal Board (“Board”) affirming the
examining attorney’s refusal to register Siny’s proposed
mark. We affirm.
I
Siny filed trademark application Serial No. 86754400
on September 11, 2015, seeking to register the mark
CASALANA in standard characters for “Knit pile fabric
made with wool for use as a textile in the manufacture of
outerwear, gloves, apparel, and accessories” based on use
in commerce under Section 1(a) of the Lanham Act, 15
U.S.C. § 1051(a). Siny also submitted a specimen consist-
ing of a webpage printout, which purported to show the
mark in use in commerce for the goods.
The examining attorney initially refused registration
because the specimen “appear[ed] to be mere advertising
material” and thus failed to show the requisite use in
commerce for the goods. The examining attorney noted in
particular that the specimen did not include a means for
ordering the goods. In response, Siny submitted a substi-
tute specimen (the “Webpage Specimen”), which was the
same webpage but with additional text showing. The
Webpage Specimen is reproduced below:
IN RE: SINY CORP. 3
4 IN RE: SINY CORP.
J.A. 61–62. Siny responded to the refusal by arguing that
the Webpage Specimen included a means to purchase the
goods—namely, the text “For sales information:” followed
by a phone number and email address.
The examining attorney rejected that argument in a
final refusal. He found that the cited text alone was
IN RE: SINY CORP. 5
insufficient for consumers to make a purchase; rather, it
only indicated how consumers could obtain more infor-
mation necessary to make a purchase. The examining
attorney noted the absence of what he considered neces-
sary ordering information, such as minimum quantities,
cost, payment options, or shipping information. He
therefore maintained the refusal based on the submitted
specimen’s failure to show the requisite use in commerce
for the goods.
Siny appealed the refusal to the Board. In a split de-
cision, the Board affirmed. The Board initially noted that
for a mark to be in use in commerce on goods, it may be
“placed in any manner on the goods or their containers or
the displays associated therewith or on the tags or labels
affixed thereto.” J.A. 2 (quoting 15 U.S.C. § 1127). The
Board observed that the Webpage Specimen was not an
example of the mark being placed on the goods or their
containers, tags, or labels. Rather, Siny contended that
the Webpage Specimen constituted a “display associated
with the goods.” J.A. 2. The Board cited precedent as
supporting a general requirement that for such a display
to show the requisite use in commerce, it must be a “point
of sale” display and not mere advertising. J.A. 2–4.
The Board then considered the Webpage Specimen in
detail. It found that the Webpage Specimen lacked much
of the information the Board would consider essential to a
purchasing decision—e.g., a price (or even a range of
prices) for the goods, the minimum quantities one may
order, accepted methods of payment, or how the goods
would be shipped. J.A. 8. The Board appreciated Siny’s
contention that because the goods were industrial materi-
als for use by customers in manufacture, the ultimate
sales transaction may have to involve some assistance
from Siny’s sales personnel. J.A. 9; see J.A. 3. Yet it
found that, “while some details must be worked out by
telephone, if virtually all important aspects of the trans-
action must be determined from information extraneous
6 IN RE: SINY CORP.
to the web page, then the web page is not a point of sale.”
J.A. 9. The Board added that in cases where the goods
are technical and specialized and the applicant and
examining attorney disagree on the point-of-sale nature of
a submitted webpage specimen, “the applicant would be
well advised to provide the examining attorney with
additional evidence and information regarding the man-
ner in which purchases are actually made through the
webpage.” J.A. 9 (noting further that “[a]ttorney argu-
ment is not a substitute for reliable documentation of how
sales actually are made . . . and verified statements from
knowledgeable personnel as to what happens and how”).
The Board ultimately affirmed the refusal because it
found that the Webpage Specimen was not a display
associated with the goods within the meaning of the
Lanham Act. J.A. 10. The dissenter found that the
Webpage Specimen was a valid “point of sale” display.
J.A. 10–12.
Siny appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(B).
II
We review the Board’s legal conclusions de novo and
its factual findings for substantial evidence. E.g., Royal
Crown Co. v. The Coca-Cola Co., 892 F.3d 1358, 1364–65
(Fed. Cir. 2018). Substantial evidence is “such relevant
evidence as a reasonable mind might accept as adequate
to support a conclusion.” Id. at 1365 (quoting Consol.
Edison Co. of N.Y. v. NLRB, 305 U.S. 197, 229 (1938)).
The Lanham Act provides for registration of a mark
based on use of the mark in commerce. 15 U.S.C.
§ 1051(a). A mark is deemed in use in commerce on goods
when, among other things, “it is placed in any manner on
the goods or their containers or the displays associated
therewith or on the tags or labels affixed thereto.” Id.
§ 1127 (emphasis added). The U.S. Patent and Trade-
mark Office (PTO) requires an applicant to submit a
IN RE: SINY CORP. 7
specimen of use “showing the mark as used on or in
connection with the goods.” In re Sones, 590 F.3d 1282,
1284 (Fed. Cir. 2009) (quoting 37 C.F.R. § 2.56(a)); see 15
U.S.C. § 1051(a)(1) (requiring for use-based registration
“such number of specimens or facsimiles of the mark as
used as may be required by the Director”).
The issue on appeal concerns whether the Webpage
Specimen qualifies as a display associated with the goods
under the Lanham Act. Mere advertising is not enough to
qualify as such a display. See Powermatics, Inc. v. Globe
Roofing Prods. Co., 341 F.2d 127, 130 (CCPA 1965) (“[I]t
[is] well settled that mere advertising and documentary
use of a notation apart from the goods do not constitute
technical trademark use.”); see also Avakoff v. S. Pac. Co.,
765 F.2d 1097, 1098 (Fed. Cir. 1985); Lands’ End, Inc. v.
Manback, 797 F. Supp. 511, 513 (E.D. Va. 1992). In
determining whether a specimen qualifies as a display
associated with the goods, one important consideration is
whether the display is at a point-of-sale location. See In
re Sones, 590 F.3d at 1289 (identifying the point-of-sale
nature of a display as a relevant consideration); In re
Marriott Corp., 459 F.2d 525, 527 (CCPA 1972) (likening
the menus at issue to point-of-sale counter and window
displays previously found acceptable); Lands’ End, 797 F.
Supp. at 514 (“A crucial factor in the analysis is if the use
of an alleged mark is at a point of sale location.”).
Whether a specimen qualifies as a display associated
with the goods is a factual question. See In re Marriott
Corp., 459 F.2d at 526 (“In our view, ‘association with the
goods’ is a relative term amenable to proof.”); Lands’ End,
797 F. Supp. at 514 (“The determination of whether a
specimen is mere advertising or a display associated with
the goods is a factual question amenable to proof.”);
accord In re Valenite Inc., 84 U.S.P.Q.2d 1346 (T.T.A.B.
2007) (“[W]hether a specimen is mere advertising or
whether it is a display associated with the goods is a
question of fact which must be determined in each case
8 IN RE: SINY CORP.
based on the evidence in that particular case.” (citing In
re Shipley Co., 230 U.S.P.Q. 691 (T.T.A.B. 1986))).
The Board considered whether the Webpage Specimen
was mere advertising or an acceptable display associated
with the goods. In doing so, it evaluated the point-of-sale
nature of the Webpage Specimen. It noted the absence of
information it considered essential to a purchasing deci-
sion, such as a price or range of prices for the goods, the
minimum quantities one may order, accepted methods of
payment, or how the goods would be shipped. J.A. 8. The
Board also considered the “For sales information:” text
and phone number contact. It assumed that the phone
number would connect a prospective customer to sales
personnel, but it found that “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.” J.A. 9; see J.A. 6 (“A simple
invitation to call applicant to get information—even to get
quotes for placing orders—does not provide a means of
ordering the product.” (quoting In re U.S. Tsubaki, Inc.,
109 U.S.P.Q.2d 2002 (T.T.A.B. 2014))). The Board further
noted the absence of any evidence (as opposed to attorney
argument) of how sales are actually made—e.g., documen-
tation or verified statements from knowledgeable person-
nel as to what happens and how. J.A. 9.
Siny’s main argument on appeal is that the Board ap-
plied “overly rigid requirements” in determining that the
Webpage Specimen did not qualify as a display associated
with the goods. Siny’s Br. 7; see id. at 12. Siny correctly
observes that we have cautioned against bright-line rules
in this context. See In re Sones, 590 F.3d at 1288–89
(holding that “a picture is not a mandatory requirement
for a website-based specimen of use” and disapproving of
the “rigid, bright-line rule” the PTO applied). But we
disagree that the Board applied improperly rigid re-
quirements here. Rather, the Board carefully considered
the Webpage Specimen’s contents and determined, on the
IN RE: SINY CORP. 9
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 determi-
nation lacked substantial evidence.
We have considered Siny’s other arguments and find
them unpersuasive. For the foregoing reasons, we affirm.
AFFIRMED