PTO snagged in Sones

The PTO took a whipping from the CAFC in In re Sones.

The CAFC wrote in Sones:

We do not interpret Lands’ End or the law of trademarks to require that
specimens of use from the Internet must always have pictures.

(...)

Second, the Board’s bright-line rule has no basis in trademark statute or policy.
“It is well established . . . that the purpose of a trademark is to distinguish goods and to
identify the source of goods.” In re Int’l Flavors & Fragrances Inc., 183 F.3d 1361, 1367
(Fed. Cir. 1999); see also McCarthy § 3:3 (“The prime question is whether the
designation in question, as actually used, will be recognized in and of itself as an
indication of origin for this particular product or service.”). To this end, the Lanham Act
requires an applicant to show “use in commerce,” which is “the bona fide use of a mark
in the ordinary course of trade.” 15 U.S.C. § 1127. To show such use, the mark must
be “placed in any manner on the goods or their containers or the displays associated
therewith or on the tags or labels affixed thereto.” Id. The statute thus specifies no
particular requirements to demonstrate source or origin; for displays, the mark must
simply be “associated” with the goods. See In re Marriott, 459 F.2d 525, 526 (CCPA
1972) (“The terms of the statute [15 U.S.C. § 1127] are met if the mark is placed ‘in any
manner’ on the ‘displays associated’ with the goods.”).

[..., the TMEP, like the MPEP is not law]

We decline to follow the TMEP’s interpretation of Lands’ End and the three-part
test, as applied to websites. We note that the TMEP is instructive, but “is not
established law.” In re Pennington Seed, Inc., 466 F.3d 1053, 1059 (Fed. Cir. 2006).
Moreover, it is unclear to what extent the TMEP requires pictures for electronic
specimens such as websites.

[....]

On remand, the PTO must consider the evidence as a whole to determine if
Sones’ specimen sufficiently associates his mark with his charity bracelets so as to
“identify and distinguish the goods.” BellSouth, 60 F.3d at 1569; see also Damn I’m
Good, Inc. v. Sakowitz, Inc., 514 F. Supp. 1357 (S.D.N.Y. 1981) (finding “Damn I’m
Good” on bracelets to be ornamental, not source-identifying).

Judge Newman dissented, on advisory opinion grounds:

The court today issues an advisory opinion on a non-issue as between the
parties. It makes no difference what we hold as to whether this examiner in this case
had the right to ask for a picture, for the applicant has provided a picture. The
trademark is being examined, and the picture is not at issue. “The case has therefore
lost its character as a present, live controversy of the kind that must exist if we are to
avoid advisory opinions on abstract propositions of law.” Hall v. Beals, 396 U.S. 45, 48
(1969). The appeal should be dismissed as moot. See Steffel v. Thompson, 415 U.S.
452, 459 n.10 (1974) (“The rule in federal cases is that an actual controversy must be
extant at all stages of review, not merely at the time the complaint is filed.”); Flast v.
Cohen, 392 U.S. 83, 95 (1968) (advisory opinions are not within the purview of Article
III).