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:

1Applicant’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

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

2Application 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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Serial No. 86895203

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.

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Serial No. 86895203

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.

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Serial No. 86895203

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

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Serial No. 86895203

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).

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Serial No. 86895203

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

12Applicant’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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Serial No. 86895203

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

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Serial No. 86895203

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.

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Serial No. 86895203

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.

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