
    IN RE: SINY CORP., Appellant
    2018-1077
    United States Court of Appeals, Federal Circuit.
    Nonprecedential Opinion Issued: January 14, 2019 Precedential Opinion Issued: April 10, 2019
    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.
    
      
      This opinion is being issued as a precedential opinion pursuant to a request by the U.S. Patent and Trademark Office under Fed. Cir. R. 32.1(e).
    
   Prost, Chief Judge.

Siny Corp. ("Siny") appeals a decision of the Trademark 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 consisting 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. J.A. 74. The examining attorney noted in particular that the specimen did not include a means for ordering the goods. In response, Siny submitted a substitute specimen (the "Webpage Specimen"), which was the same webpage but with additional text showing. The Webpage Specimen is reproduced below:

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 insufficient for consumers to make a purchase; rather, it only indicated how consumers could obtain more information necessary to make a purchase. The examining attorney noted the absence of what he considered necessary 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 decision, 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 materials 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 transaction must be determined from information extraneous 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 manner in which purchases are actually made through the webpage." J.A. 9 (noting further that "[a]ttorney argument 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, 59 S.Ct. 206, 83 L.Ed. 126 (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 Trademark Office (PTO) requires an applicant to submit a 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 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 decision, 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, 2005 (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., documentation or verified statements from knowledgeable personnel as to what happens and how. J.A. 9.

Siny's main argument on appeal is that the Board applied "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 requirements here. Rather, the Board carefully considered the Webpage Specimen's 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.

We have considered Siny's other arguments and find them unpersuasive. For the foregoing reasons, we affirm.

AFFIRMED 
      
      Unlike the webpages of some electronic market-places, the Webpage Specimen at issue in this case does not make the goods available for purchase through the webpage.
     