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Lack of proper documentation dooms trademark registration
February 1, 2025
February/March 2025 Cantor Colburn IP Newsletter
Registering certain trademarks requires including a specific kind of example use, or “specimen,” as part of the application. A new decision from the Trademark Trial and Appeal Board (TTAB) highlights the importance of submitting the correct specimen.
Examiner wants receipts
Gail Weiss applied to register the mark GABBY’S TABLE for “computerized online retail store services” for food- and cooking-related items, based on her intent to use it in commerce. Trademark applicants who base their application on “use in commerce” must provide a specimen at the time of filing, and “intent to use” filings have to provide a specimen during a later application phase, but still prior to registration.
For services, a specimen should show the trademark as it’s actually used in commerce with the applicant’s existing services, in a way that directly associates the mark with the services. A specimen for services could be, for example, an advertisement, brochure, website printout or other promotional material showing the trademark used for the services.
Weiss’s specimen was a copy of a webpage showing a list of items available for purchase, with “Buy Now” buttons that took users to third-party sellers, such as Amazon and Cuisinart. The U.S. Patent and Trademark Office’s examining attorney refused registration, finding that the specimen failed to show the mark in use in commerce in connection with the identified services. Weiss appealed to the TTAB.
TTAB checks out specimen
On review, the TTAB explained that, if an applicant submits an advertisement showing the mark as a specimen, it must both:
1. Include a reference to the service, and
2. Use the mark to identify the service and its source.
A specimen that shows only the mark, with no reference to or association with the identified services, doesn’t show service mark usage.
The board concluded that Weiss’s specimen didn’t show a direct association between the proposed mark GABBY’S TABLE and “computerized online retail store services” in the various fields cited in her application. It didn’t include, for example, a virtual “shopping cart,” pricing or shipping information, or any other indicia of online retail store services. Such indicia do, however, appear on the third-party sites to which potential purchasers are redirected after hitting the “Buy Now” button.
Despite the presence of “Buy Now” buttons on the specimen and her webpage, Weiss doesn’t herself sell the products she recommends. Rather, the TTAB found, she provides referrals and recommendations of food- and cooking-related products offered for sale by third parties.
The finding was reinforced with evidence regarding her status as an Amazon Associate, which showed her “Amazon affiliate store” is a referral service and not an online store. Merely calling the service an “affiliate store” didn’t change her referrals into online retail store services, the TTAB said.
A recommendation
In the end, the TTAB affirmed the examining attorney’s refusal to register the proposed mark because the specimen failed to show the proposed mark in use in commerce in connection with the services. The TTAB’s rejection illustrates how critical it is to understand and satisfy the applicable trademark registration requirements.
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