As the old maxim goes, “every athlete wants to be a rock star, every rock star wants to be a politician, and every lawyer wants to be a web designer” — we’re no different. We love our designer friends, and that’s why we’re posting this week on ways to help you (designer) best position your clients to secure trademark rights for the spiffy designs you’ve created for them.
Let’s dig in a bit
One typical scenario for us goes something like this: Ideator Indi wants to protect her hot new logo developed by Creative Carl dba Banga Bytes. In our initial meeting with Indi, we learn that she wants to hold off on launching a social profile or app until Banga finishes her e-commerce site. We are happy to assist Indi with securing copyright and trademark protection for her new branding scheme. However, due to certain aspects of trademark law, our work will necessarily play off of Banga’s ongoing development. Under copyright law, Indi’s logo is eligible for protection from the time it is fully formed and static in a vector and image file. Under trademark law, however, Indi will need to demonstrate that her brand mark is in actual use in order to obtain the fancy ® that comes along with trademark registration.
Here is the typically dry guidance you’ll find from the trademark office, which is actually much more informative and human than the guidance you get from the patent office:
“A pending trademark application based on use in commerce requires the applicant to submit a “verified specimen” to the trademark office showing that the specimen (a) was in actual use in commerce at least as early as the filing date of the application and (b) shows proper trademark or service mark use of the same mark for each international class identified in the application. Along with the specimen an applicant is required to provide a statement that declares that “the specimen was in use in commerce at least as early as the filing date of the application” and is supported by a declaration or signed affidavit.”
Essentially, a web page created by Banga can be used to satisfy this requirement if the web page can constitute a “display associated with the goods.” The website must display the mark in a way that allows consumers to recognize it as a trademark. This requires that the webpage:
- contains a picture or textual description of the identified goods;
- shows the mark in association with the goods; and
- provides a means for ordering the identified goods.
Picture or Description of the Goods
In order to associate a mark with the trademarked goods, the webpage “must show or describe the goods for the consumer,” which can be accomplished either by a picture or description. A description will be adequate if “the actual feature or inherent characteristics of the goods are recognizable from the textual description.” The more complex the product is, the more detailed the description must be in the absence of a picture.
Shows the Mark in Association of the Goods
The crucial element here is that the web-page specimen “must in some way evince that the mark is ‘associated’ with the goods and serves as an indicator of source.” The mark must also be displayed on the web page in a manner in which customers will recognize it as a mark.
Factors that should be taken into account by a web-page designer are:
- the prominence and placement of the mark;
- the content and layout of the webpage; and,
- the overall impression the web page creates.
Prominence of the Mark
The more prominent the mark appears on the page, the more likely the mark will be viewed as a trademark. Ways for a web designer to make the mark more prominent are:
- Increase the size of the mark;
- Place the mark in a distinct style or in a different color than its surroundings;
- Position the mark next to the good or service; and,
- Use the “™” designation.
Alternatively, bad practices that harm the prominence of the mark include:
- Showing the mark in the same font/color/style as the text;
- Burying the mark in a sentence; and,
- Surrounding the mark by descriptive text without any distinction.
Placement of Mark and Proximity to the Goods
Placing the mark in close proximity to the goods/services allows the consumer to associate the mark with the goods or services offered on the website. Good ways to portray the mark in order to have consumers associate the mark with the product include:
- Place the Mark in the website or email addresses
- Place the mark in a typical place that a consumer expects a mark to appear
- Put the mark at the top of the page
- If the website is for a service, placing the mark in close proximity of terms typically associated with services, such as “departments”, “registry”, “sell here”, “Add to Cart,” etc.
- If there are other marks present on a webpage, a website must distinguish what goods or services the primary mark actually represent
It is also important to note that a web-page does not need to be described as a display for the mark, nor does it need to be from an applicant’s webpage. A third-party website may be acceptable as a display if the mark is sufficiently associated with the applicant’s goods. Think like an Amazon page that is selling a product that bears the mark. This requires that the website picture a good in association with the mark and provides a means for ordering them.
A website that directly sells to customers can be used to associate a mark with goods. A website that does not provide a way to purchase the goods/services is merely an advertisement and cannot be used as a display associated with the goods to prove use.
Good indicators of an ability to buy the goods on the website are:
- A sales order form, an online process to accept an order (for example a shopping cart), or special instructions on how to order
- Information on quantities
- Indications of methods of payment
- Shipping information
- Ways to contact the mark owner to place an order, if the contact information is accompanied by special instructions, and the contact information goes beyond an avenue to gather information.
All this information and more can be found in section 904.03(i) (“Electronic Displays”) of the Trademark Manual of Examining Procedure.
The picture below is a good example of how Amazon represents its mark. Looking at the header, you can see that the “Amazon” mark is proudly displayed in the top left along with several terms that suggest a service based good (“Departments,” “Today’s Deals,” filtering options, etc) that informs the reader that Amazon performs a service as an online retailer.
The Amazon website also does a great job of differentiating the Wilson logo in the middle of the page. The Wilson logo is both larger and more distinct than the Amazon logo — but it’s not confusing as to what goods/services are associated with Amazon and which ones are associated with Wilson. This is due to good website design; Amazon has efficiently placed subtle (yet framing) menus on the top and left of the screen. The Amazon market is starkly differentiated from what is being sold in the middle of the screen.
Lastly, it is very obvious how to order via Amazon, allowing this webpage to be an example of a 3rd party webpage that Wilson could use as a “verified specimen” if they wished.
Integrating these steps into your web design process will help you and your clients in the long term. We know material and instructions about the trademark process can be confusing, but creating a framework that combines your design with these simple steps will best position your clients for trademark success — then you can leave the rest up to the team at RVL.
About Kevin Christopher[avatar user=”kevin” size=”medium” align=”left” link=”file” /]
Kevin is founder and principal of Rockridge®. Kevin’s practice areas include corporate, patent and trademark law. He is an entrepreneur, NIH RADx faculty member and Small Business Innovation Research (SBIR) reviewer. He mentors impactful and innovative founders through First Flight Venture Center, Oak Ridge National Lab Innovation Crossroads, and Tsai Center for Innovative Thinking at Yale. Kevin has been recognized as a SuperLawyer by Thomson Reuters and Top Business Leader by Conscious Company Magazine. Read more about Kevin, connect with him, and Calendly him.
RVL recommended reading by Kevin:
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