The USPTO has requested public comments regarding a draft examination guide for its Examining Attorneys on the subject of the use of webpages as specimens to show use of a mark in commerce. More information about the topic, as well as the draft examination guide, are available from the USPTO here.
Comments are to be submitted via IdeaScale, an online collaboration tool hosted by the USPTO here:
On the IdeaScale site, users can discuss the comments of others (and vote for them) and/or submit their own comments.
Our firms comments are re-posted here:
The following are the comments of the law firm of Erik M. Pelton & Associates, PLLC® of Falls Church, Virginia (“EMP&A”), in response to the Draft of Examination Guide: Webpage Specimens as Displays Associated with the Goods. Over the last decade, EMP&A has represented hundreds of clients, including many small businesses, in U.S. trademark prosecution, maintenance, and disputes. EMP&A clients have been issued more than 1,500 U.S. trademark registrations. Erik M. Pelton, the firm’s founder, worked as a USPTO Examiner from 1997 to 1999.
In addition the authorities and examples set forth in the Draft Examination Guide, given how simple and cheap (or free) it is to set up a webpage, we suggest that additional language be added to Section II.A. regarding requests for information and refusals under Trademark Act Sections 1 and 45. The additions suggested below are for the purpose of encouraging and permitting the Examining Attorney to investigate whether the webpage specimens submitted are in fact functional and legitimate.
Submitting a webgape specimen that is false or misleading is an increasingly easy endeavor. For example, an applicant could easily create a single webpage that looks like a part of a larger site, but is not; submit a page that appears to have links for a shopping cart or ordering details, but which in fact has no such working links; submit a screenshot of a site which is not current; or submit a mockup page of a possible webpage created by a web designer.
As a result, we suggest the following language be added to the Draft Examination Guide:
– Examining attorneys should be permitted and encouraged to issue a request for the URL of the webpage specimen submitted, if such information has not provided by the applicant.
– Examining attorneys should be permitted and encouraged to issue a request for the date on which the webpage screen capture was made, if such information has not provided by the applicant.
– Examining attorneys should be permitted and encouraged to visit the URL of the webpage indicated in a webpage specimen to ensure that the page is part of an accessible site and that the links and items on the page are functioning and do not appear to have been created solely for the purposes of creating a specimen of use to submit to the USPTO.
– If there is any question regarding a submitted webpage’s legitimacy and/or actual use in commerce, Examining Attorneys should be permitted and encouraged to require a declaration from the applicant, signed under penalty of perjury, stating that the webpage specimen submitted is functioning and legitimate.
Thank you for the opportunity to comment.
Erik M. Pelton
ERIK M. PELTON & ASSOCIATES, PLLC®