Affiliate Programs Are Not Retail Services for Purposes of Trademark Registration
The Trademark Trial & Appeal Board (TTAB) affirmed the refusal by the US Patent and Trademark Office (USPTO) to register a mark because there was no direct association between the specimen the applicant provided and the services the applicant was using the mark with.
Gail Weiss had applied to register GABBY’S TABLE for use in connection with “computerized online retail store services in the field of food, cooking utensils, cookware, culinary arts cookbooks, magazines, and videos, and lifestyle books, magazines, and videos.”
In connection with her application, Weiss submitted a specimen of use showing a webpage featuring items she recommends for purchase. However, customers can’t buy these items through Weiss’s website. Rather, the “buy now” buttons redirect customers to third-party websites, including Amazon, where the recommended products can be purchased.
The TTAB found that even though Weiss was paid a commission by the third-party stores, this is not the same thing as providing online retail-store services. To register a mark for use in connection with retail-store services, the specimen must show that consumers are able to purchase the goods directly from the applicant.
Trade Names Used Only as Company Designations Are Not Registrable
A recent decision by the TTAB reminds us that a designation used only as a trade name can’t be registered with the USPTO as a trademark.
Hi-Tech Pharmaceuticals, Inc. filed an application to register EXPERIMENTAL AND APPLIED SCIENCES as a trademark for dietary and nutritional supplements. To determine whether EXPERIMENTAL AND APPLIED SCIENCES functions solely as a trade name or as both a trade name and a trademark, the TTAB considered several factors:
whether the applicant is using its full corporate name (or other entity designation)
whether the applicant capitalizes the name
whether the applicant is using its name in a significantly bolder or larger style of type
whether the applicant is displaying its name in a contrasting color
the proximity of the name to the applicant’s contact information
The only place the proposed mark appeared on Hi-Tech’s bottles was in a four-line “stack,” with the first two lines reading:
Developed and exclusively manufactured by
Experimental And Applied Sciences
The next two lines included the company’s address, phone number, and URL.
The TTAB concluded that although the name was in bold and omitted the “Inc.,” purchasers and potential purchasers would perceive the proposed mark as a trade name identifying the business that made the supplements, not as a mark that distinguishes Hi-Tech’s products from others.
Selling Your Own Products Can Be a “Service” for Trademark Purposes
For an activity to be considered a “service” for purposes of the trademark laws, the service must (among other things) be performed “to the order of, or for the benefit of, someone other than the applicant.”
In July, however, the TTAB held that operating an online retail store under your own brand name can qualify as use of a service mark, even when you sell only your own branded products in that store.
Ava Labs sought to cancel Blizzard Entertainment’s registration for BLIZZARD, arguing that Blizzard sold only its own products on its e-commerce website, which isn’t “use” of the mark for trademark purposes.
Although it’s previously been held that selling one’s own products isn’t a “service” for trademark purposes, the TTAB found that Blizzard’s provision of an e-commerce website primarily benefited consumers, so the service is, in fact, being performed for the benefit of someone other than the business owner.
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Please feel free to contact us if you have any questions about, or need assistance with, registering or enforcing your trademarks.
Photo by Becca Tapert on Unsplash
