The PTO has taken the position that catalog use of a mark qualifies as a display associated with the goods so long as the catalog (1) includes a picture of the goods, (2) the trademark is sufficiently near the picture such that the mark is associated with the goods, and (3) information necessary to order the goods is provided. See T.M.E.P. § 904.03(h) (2013); see alsoIn re Sones , 590 F.3d 1282, 1285–86 (Fed. Cir. 2009) (recognizing PTO's elaboration of test for when a catalog constitutes a specimen showing use of a mark in commerce for goods). While the TEMP "is not established law," it is instructive.

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.

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.

But, in the internet age, one could imagine a mark serving its critical source-identifying function in domestic commerce even absent the domestic physical presence of the items whose source it identifies. See, e.g., 5 J. McCarthy, Trademarks and Unfair Competition § 29:56 (5th ed. Supp. 2023) ("The use of an infringing mark as part of an Internet site available for use in the United States may constitute an infringement of the mark in the United States"); 4 id., § 25:54.50 ("When an alleged infringing mark is used on the internet, the use is clearly a 'use in commerce' "); 1 id., § 3:7 (discussing "evidence of use as a trademark" where "a designation is prominently displayed in a way easily recognized by web users as an indicator of origin"; accord, In re Sones, 590 F.3d 1282, 1288 (CA Fed. 2009) (observing, with respect to the use-in-commerce requirement, that a " 'website [can be] an electronic retail store, and the web page [can be] a shelf-talker or banner which encourages the consumer to buy the product' "). Guided by this understanding of "use in commerce," I join the Court's opinion in full.

And appellant does not point to any decision by the Board which found mere offering of a service to be sufficient. In support of the argument that mere offering is sufficient, appellant cites In re Sones, 590 F.3d 1282, 1290 (Fed.Cir.2009). But that case merely held that “the test for an acceptable website-based specimen, just as any other specimen, is simply that it must in some way evince that the mark is ‘associated’ with the goods and serves as an indicator of source.”

In the past, we have declined to follow provisions of the TMEP where we conclude that they are incorrect. See, e.g., In re Sones, 590 F.3d 1282, 1288 (Fed.Cir.2009). Even assuming we owed some deference to the Board's interpretation of an ambiguous rule, see In re Garner, 508 F.3d 1376, 1378–79 (Fed.Cir.2007), here at the time that Rule 26(e), governing supplementation of discovery responses, was adopted in 1972 by the Board, it was quite clear that sanctions could be imposed without a motion to compel a court order.

In the past, we have declined to follow provisions of the TMEP where we conclude that they are incorrect. See, e.g., In re Sones, 590 F.3d 1282, 1288 (Fed. Cir. 2009). Even assuming we owed some deference to the Board's interpretation of an ambiguous rule, see In re Garner, 508 F.3d 1376, 1378-79 (Fed. Cir. 2007), here at the time that Rule 26(e), governing supplementation of discovery responses, was adopted in 1972 by the Board, it was quite clear that sanctions could be imposed without a motion to compel a court order.

IEP also provided images showing that its mark appeared on that product in 2020 and continues to appear on it to this day. ECF 244, ¶ 28; ECF 222, at 14; ECF 261, at 12; see In re Sones, 590 F.3d 1282, 1288 (Fed. Cir. 2009) (“[T]he test for an acceptable website-based specimen, just as any other specimen, is simply that it must in some way evince that the mark is ‘associated' with the goods and serves as an indicator of source.”)

Issues of law—such as plaintiff's argument that TMEP § 1202.10 is inconsistent with the Lanham Act—are reviewed de novo. To illustrate the way in which a federal court may review a TMEP provision, defendant aptly points to In re Sones, 590 F.3d 1282 (Fed. Cir. 2009), in which the Federal Circuit reviewed an appeal of the TTAB's decision affirming the examiner's refusal of trademark registration. As part of its review, the Federal Circuit considered the PTO's application of a three-part test adopted in the TMEP, evaluated the validity of that TMEP provision, found that it was not consistent with the case law or "trademark statute or policy," and "decline[d] to follow the TMEP" provision, observing that "the TMEP is instructive, but 'is not established law.' "

"[T]he TMEP is instructive, but 'is not established law.'" In re Sones, 590 F.3d 1282, 1288 (Fed. Cir. 2009) (quotation omitted). Nevertheless, the TMEP represents the USPTO's established policies, and Courts regularly follow its guidance.