Nonprecedential Opinion Issued: January 14, 2019
from the United States Patent and Trademark Office, Trademark
Trial and Appeal Board in No. 86754400.
Kattman, Reinhart Boerner Van Deuren s.c., Milwaukee, WI, for
appellant. Also represented by Heidi R. Thole.
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.
Prost, Chief Judge, Lourie and Stoll, Circuit Judges.
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.
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.
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:
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.
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.
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 ...