Pure Storage, Inc.

Trademark Trial and Appeal Board

Jun 6, 2019

86895203 (T.T.A.B. Jun. 6, 2019)

This Opinion Is Not a
Precedent of the TTAB

Mailed: June 6, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Pure Storage, Inc.
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Serial No. 86895203
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Sally M. Abel of Fenwick & West LLP1
for Pure Storage, Inc.

Wendy B. Goodman, Trademark Examining Attorney, Law Office 109,
Michael Kazazian, Managing Attorney.
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Before Mermelstein, Lykos, and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

I. Background
Pure Storage, Inc. (“Applicant”) seeks registration on the Principal Register of the
mark FLASHBLADE in standard characters for:

1 Applicant’s prior counsel withdrew after briefing was completed in this case, and Ms. Abel
and Fenwick & West LLP were appointed on December 17, 2018.
Serial No. 86895203
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Computer hardware and downloadable software for use in
the field of enterprise data storage; Data storage apparatus
and equipment, namely, data processing apparatus and
apparatus for storing, transmission and reproduction of
data in International Class 9.2
Applicant initially based the application on an allegation of its bona fide intent to
use the mark in commerce. After the notice of allowance issued, Applicant filed a
statement of use with a specimen that Applicant described as “pages from applicant’s
website showing the product and how to order it.”3 The Examining Attorney refused
registration under Sections 1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051 and
1127, on the ground that the specimen is mere advertising, as the webpages do “not
include a means for ordering the goods.”4 After the application was abandoned for
failure to respond to the Office Action, Applicant successfully petitioned to revive it,
and at the same time responded to the refusal by submitting a substitute specimen
described as “pages from applicant’s website showing the mark being used to identify
the goods and includes the contact request through which the purchasing process is
initiated.”5
The Examining Attorney then made the refusal final, providing the following
rationale:
In this case, the specimen does not include a way of
ordering the goods; information and links are provided to
contact Applicant to receive a “demo” or an “evaluation” but

2 Application Serial No. 86895203 was filed February 2, 2016, based on alleged use of the
mark in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a).
3 TSDR October 13, 2016 Statement of Use at 1.
4 TSDR December 1, 2016 Office Action at 1.
5 TSDR September 11, 2017 Petition to Revive at 1-10.
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a demo or evaluation is not the means for ordering goods,
pricing information, etc. The specimen does not state how
to receive pricing or ordering information; it simply states
how to get a “demo.” A free demo or evaluation is not
ordering the goods. See In re Sones, 590 F.3d 1282, 93
USPQ2d 1118, 1122-24 (Fed. Cir. 2009); In re Azteca Sys.,
Inc., 102 USPQ2d 1955, 1957 (TTAB 2012); TMEP
§§ 904.03(i), et seq. Without this feature, the specimen is
mere advertising material, which is generally not
acceptable as a specimen for showing use in commerce for
goods. See In re Kohr Bros., 121 USPQ2d 1793, 1794 (TTAB
2017) (quoting In re Quantum Foods, Inc., 94 USPQ2d
1375, 1379 (TTAB 2010)); In re Genitope Corp., 78 USPQ2d
1819, 1822 (TTAB 2006); TMEP § 904.04(b).6
Applicant requested reconsideration, and provided attorney argument – but no
declaration or other evidence – regarding the nature of the goods and the purchasing
process.7 Applicant’s outside counsel argued that the goods are customized and highly
technical, requiring “a significant amount of customer input and information in
connection with the purchase.”8 Applicant’s counsel further stated that customers
would have “established purchasing accounts prior to making purchases,” and the
“Request a Demo” button9 “provides exactly that information on how/where to buy,”
because Applicant and its customer would then “identify and customize the product,”
with pricing information only becoming available after that.10
The Examining Attorney denied the request for reconsideration, noting that the
“Request a Demo” button is not a way to order the goods, and instead “invit[es]

6 TSDR November 1, 2017 Office Action at 1 (citations revised).
7 4 TTABVUE 1.
8 Id.
9 Id.
10 Id.
Serial No. 86895203
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potential customers to ask for more information about the goods, rather than
purchase them.”11 Applicant appealed, and the appeal is fully briefed.
As explained below, we affirm the refusal to register.
II. Whether the Specimen Qualifies as a Display Associated with the
Goods
Under Section 45 of the Trademark Act, 15 U.S.C. § 1127, a trademark is used in
commerce when “it is placed in any manner on the goods or their containers or the
displays associated therewith ....” See also Trademark Rule 2.56(b)(2), 37 C.F.R.
§ 2.56(b)(1). The crux of the issue in this case is whether Applicant’s webpage
specimens contain sufficient ordering means and information to qualify as a display
associated with the goods. “Factually, we need to ask whether the purported point-
of-sale display provides the potential purchaser with the information normally
associated with ordering products of that kind. This has long been an important factor
to the Board and its reviewing Courts.” In re Anpath Grp. Inc., 95 USPQ2d 1377,
1381 (TTAB 2010) (citing In re Marriott Corp., 173 USPQ 799, 800 (CCPA 1972);
Lands’ End Inc. v. Manbeck, 797 F. Supp. 511, 24 USPQ2d 1314, 1316 (E.D. Va. 1992);
and In re Shipley Co., 230 USPQ 691, 693-94 (TTAB 1986)). Applicant relies on the
“Request a Demo” button as equivalent to providing a mechanism for ordering the
goods, arguing that the invitation to request a demo makes the webpage point-of-sale
material.

11 5 TTABVUE 2-3.
Serial No. 86895203
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Displays associated with the goods, including online displays, must be at the point
of sale, where the customer sees the mark on the display contemporaneously with the
ability to purchase the goods. Lands’ End, 24 USPQ2d at 1316 (“A crucial factor in
the analysis is if the use of an alleged mark is at a point of sale location.”); see also In
re Sones, 93 USPQ2d at 1122 (quoting In re Ostberg, 83 USPQ2d 1220, 1222-23
(TTAB 2007) (“‘In [Lands’ End], the determinative factor was that the mark was used
at the point of sale.’”)). “A point of sale location provides a customer with the
opportunity to look to the displayed mark as a means of identifying and
distinguishing the source of goods.” Lands’ End, 24 USPQ2d at 1316. The Board has
held:
[T]o be more than mere advertising, a point-of-sale display
associated with the goods must do more than simply
promote the goods and induce a person to buy them; that is
the purpose of advertising in general. The specimen must
be “calculated to consummate a sale.”
In re U.S. Tsubaki, Inc., 109 USPQ2d 2002, 2009 (TTAB 2014) (quoting In re Bright
of Am., Inc., 205 USPQ 63, 71 (TTAB 1979) (emphasis added)); see also Avakoff v. S.
Pac. Co., 764 F.2d 1097, 226 USPQ 435, 436 (Fed. Cir. 1985) (solicitation letters sent
to retailers deemed mere advertisements in which use of the mark apart from the
goods did not qualify as trademark use for the goods). To be calculated to consummate
a sale, the specimen must contain sufficient practical information about the goods
and a way to order the goods, so as to put the prospective customer at the point of
purchase. A way to order the goods can include a catalog order form, a telephone
number through which the consumer is invited to call in a purchase, Lands End, 24
USPQ2d at 1316, or in the case of webpage specimens, a way to “plac[e] orders for the
Serial No. 86895203
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goods via the Internet,” Anpath Grp., 95 USPQ2d at 1381, such as selecting goods
and adding them to a virtual shopping cart for check-out.
On the other hand, a specimen fails to qualify as a point-of-sale display if it
contains more limited information, and would require a prospective customer to
“contact applicant to obtain preliminary information necessary to order the goods”
before the prospective customer could actually place an order. Id.; see also U.S.
Tsubaki, 109 USPQ2d at 2005. The U.S. Court of Appeals for the Federal Circuit
recently affirmed the rejection of a webpage specimen because it was not a point-of-
sale display. The Federal Circuit held that substantial evidence supported the Board
decision:
[The Board] noted the absence of information it considered
essential to a purchasing decision, such as a price or range
of prices for the goods, the minimum quantities one may
order, accepted methods of payment, or how the goods
would be shipped. J.A. 8. The Board also considered the
“For sales information:” text and phone number contact. It
assumed that the phone number would connect a
prospective customer to sales personnel, but it found that
“if virtually all important aspects of the transaction must
be determined from information extraneous to the web
page, then the web page is not a point of sale.” J.A. 9; see
J.A. 6 (“A simple invitation to call applicant to get
information—even to get quotes for placing orders—does
not provide a means of ordering the product.” (quoting In
re U.S. Tsubaki, Inc., 109 U.S.P.Q.2d 2002, 2005 (T.T.A.B.
2014))). The Board further noted the absence of any
evidence (as opposed to attorney argument) of how sales
are actually made—e.g., documentation or verified
statements from knowledgeable personnel as to what
happens and how. J.A. 9.
In re Siny Corp., 920 F.3d 1331, 1336, 2019 USPQ2d —, — (Fed. Cir. 2019).
Serial No. 86895203
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We note that Applicant and the Examining Attorney focus their arguments on the
substitute specimen,12 which consists of nine pages of screenshots from Applicant’s
website.13 While the webpages provide information about the goods, “the industry’s
first all-flash storage purpose-built for modern analytics,”14 we find that they do not
have a means of ordering the goods and enough information to put a potential
consumer in a position to order them.
Applicant contends that the “REQUEST A DEMO” button constitutes the means
of ordering the goods. See In re Dell Inc., 71 USPQ2d 1725, 1727 (TTAB 2004) (holding
that a website can be a display associated with the goods when it “provides a means
of ordering the product”). The button appears on six of the nine screenshots, five of
which also include buttons to “GET STARTED” and “REQUEST EVALUATION.”15
The last screenshot also includes the following at the bottom of the page:16

12 Applicant’s original specimen does not include the “Request a Demo” button and refers to
“FLASHBLADE SPECIFICATIONS – BETA” and indicates, “FINAL SPECIFICATIONS TO
BE RELEASED UPON GA [general availability],” with a further message that “[a]ll features
and specifications are preliminary and may change before GA.” TSDR October 13, 2016
Specimen at 4. See TRADEMARK MANUAL OF EXAMINING PROCEDURE § 904.03(e) (Oct.
2018). We agree that this specimen was not acceptable.
13 TSDR September 11, 2017 Specimen at 1-9.
14 Id. at 1.
15 Id. at 5-9.
16 Id. at 9.
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However, on its face, an invitation to contact Applicant for a product
demonstration does “not indicate to consumers that they can place orders for the
identified goods via the provided contact information.” U.S. Tsubaki, 109 USPQ2d at
2006. According to its ordinary definition, a “demo” would provide a prospective
customer the opportunity to see how a product works. Moreover, the screenshot
excerpt above suggests that to request a demo, the prospective customer provides
contact information for the purpose of scheduling the demo at some time in the future,
further undermining the notion that the use of the mark on the website could be at
the point of sale.
In addition, we lack persuasive evidence specific to Applicant’s business and
purchasing process to prove that the specimen constitutes point-of-sale material, by
clarifying that something other than the ordinary meaning of “demo” applies in this
context. While we have taken into consideration Applicant’s description of the
specimen as having a “contact request through which the purchasing process is
initiated,” this very general and conclusory unverified characterization does not
convince us that the offer to request a demo equates to a means of ordering these
goods, so as to put the customer at the point of sale. See In re Pitney Bowes, Inc., 125
USPQ2d 1417, 1420 (TTAB 2018) (“consideration must be given not only to the
information provided by the specimen itself, but also to any explanations offered by
Applicant clarifying the nature, content, or context of use of the specimen that are
consistent with what the specimen itself shows.”) (emphasis added). We also
Serial No. 86895203
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note the attorney argument concerning the purchasing process,17 but remain mindful
that “[a]ttorney argument is no substitute for evidence.” Enzo Biochem v. Gen-Probe,
Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005). As the Board noted in
U.S. Tsubaki, 109 USPQ2d at 2006, “there is no actual proof to support these
statements in the record. We have only applicant’s counsel’s statements as to how
applicant” sells the goods. In this case, just as in U.S. Tsubaki, “we have here no
foundational information about counsel’s investigation of, or understanding of,
applicant’s business, that would put him in a position to make statements regarding
the marketing of the products at issue….” Id. (citing case law rejecting
unsubstantiated arguments). The specimen on its face does not show it is point-of-
sale material, and Applicant has not provided evidence to establish that the webpages
are truly point-of-sale displays.
In addition, Applicant’s specimen lacks other information that would help make a
prospective customer ready to consummate a sale. For example, there is no pricing or
payment information, and Applicant concedes in its Brief that “[p]ricing is necessarily

17 4 TTABVUE 1. In addition to the lack of a supporting declaration, this case has other
important differences from In re Valenite, 84 USPQ2d 1346 (TTAB 2007), in which a
specimen with a “Customer Service” toll-free telephone number was deemed to have
sufficient ordering information given the testimony regarding the specialized industrial
nature of the goods, and the actual consumer purchases through the customer service line.
In particular, the Valenite specimen included detailed product information and an “online
calculator” so that “applicant’s website provides the prospective purchaser with sufficient
information that the customer can select a product and call customer service to confirm the
correctness of the selection and place an order.” Id. at 1349-50. By contrast, in this case, the
same level of information is lacking, and a prospective customer would not be in a position to
merely “confirm the correctness of the selection and place an order.” Rather, a product
demonstration apparently would be required, along with at least the exchange of other
information for customization, and the formulation of pricing information to consider prior
to a customer being ready to make a selection and purchase.
Serial No. 86895203
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only available after [product customization] information is provided.”18 Also, as
Applicant has acknowledged in its Brief,19 and as the specimen reflects, its goods
require customization in consultation with the customer. One webpage contains a
table of “specifications” options, depending on whether the 8-, 17-, or 52-TB Blade is
selected, and whether “7 Blades” or “15 Blades” is selected.20 These omissions also
weigh against considering the webpages point-of-sale displays. See U.S. Tsubaki, 109
USPQ2d at 2005 (rejecting specimen without sales form or clear ordering information
with “no information about minimum quantities one must order, how much the goods
cost, or how the orders are shipped. Such advertising is not acceptable to show
trademark use on goods”); Anpath Grp., 95 USPQ2d at 1381 (rejecting specimen
without clear ordering information where “the potential purchaser has no actual
information about the minimum quantities of applicant’s goods one may order, how
much the goods cost, how one might pay for the products, how the large containers of
liquid would be shipped, etc.”).
III. Conclusion
Decision: We deem Applicant’s specimen unacceptable as mere advertising and
therefore affirm the refusal to register Applicant’s mark.

18 7 TTABVUE 5 (Applicant’s Brief).
19 Id.
20 TSDR September 11, 2017 Specimen at 2.