Is a web page proof that a trademark is being used in commerce. IN RE:SINY

A trademark is something that a product producer uses to brand its goods so consumers can distinguish the producers goods from goods of competitors. Traditionally a trademark is thought of as a simple symbol, word or short phrase, however anything that is used to let consumers know who produced a product can be eligible for trademark protection. In the United States the first person to use a trademark in commerce is considered the senior user of a trademark. People that use the same or a similar trademark after the senior user are considered junior users. If a junior user uses a trademark in a way that leads to consumer confuse the junior user’s products with the senior users products, that can be considered trademark infringement. A senior user of a trademark has priority over the junior user of a trademark and the senior user can file a lawsuit to enjoin the junior user from using the trademark in a way that confuses consumers.

In the United States a trademark user is granted priority based on the date they start using a trademark. Registering a trademark is an important way that a trademark user can strength their right to a trademark, however registration of a trademark is not necessary for a trademark owner to begin using a trademark commerce or to be granted some rights to a trademark.

If a trademark owner decides that they want to register their trademark in the United States the registration process is relatively simple. An application to register the trademark can be filed with the United States Patent and Trademark Office. The trademark application process can be quite complex but generally speaking, if a trademark application demonstrates that a trademark is distinctive and “in use” in commerce than the application will be granted relatively quickly. When the United States Patent and Trademark Office says that a trademark is not distinctive or”in use” in commerce, it can be an up hill battle to get the trademark application granted. That is why there are attorneys that specialize in just trademark law.

There is no requirement that a trademark owner must use a trademark attorney to file a trademark application with the United States Patent and Trademark Office today, however it is a good idea. A trademark attorney has the experience and resources to submit a trademark application which will be granted on the first try.

A case which illustrates why it is so important to have a trademark attorney involved at the beginning of the trademark application process is IN RE: SINY CORP., 2018-1077 (C.A.F.C. 2019). 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 at the United States Patent and Trademark Office rejected the web page as proof that the trademark was being used in commerce.

Siny appealed to the Trademark Trial and Appeal Board. The Board sided with the examining attorney and rejected the trademark application. The board held that the website was not evidence that the trademark was being used in commerce because consumers could not purchase the product through the website. Because consumers could not purchase Siny’s trademark products though the website, the website was an advertisement and not evidence of use of the trademark in commerce. Siny then appealed the Court of Appeals for the Federal Circuit.

The Federal Circuit affirmed the findings of the Board. This does not mean that Siny lost their trademark, however they wasted a lot of money on a trademark application that was rejected. Had Siny engaged an attorney experienced in United States Trademark Law before it filed its trademark application, the outcome would have likely been different.

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