Tuesday, December 07, 2010

Test Your TTAB Judge-Ability on these Two Service Mark Specimens of Use

Examining Attorney Ira Goodsaid rejected two specimens of use, one for brick-and-mortar retail clothing store services, and the other for online retail clothing store services. Let's see if you agree with him. Applicant's specimen for its mark AERIE UNDIES IN A BUNCH for retail clothing store services comprised a photograph of a sign on a table in a store (immediately below). Is that a proper specimen of use for these services? In re Retail Royalty Company, Serial No. 77137764 (November 23, 2010) [not precedential].

No, it is not. The Board found the sign to be a "display associated with the goods," which would likely be acceptable as a trademark specimen of use for the goods displayed. But it is not a proper service mark specimen.

The mark by its nature and as it appears on these specimens specifically and directly refers to and identifies the goods themselves. Purchasers would not also directly understand and perceive the mark, as it appears on the display sign, to be a source-indicator for the retail store services themselves.

The Board found nothing inherent in the mark itself that would lead purchasers to view it as anything but a product mark for applicant’s underwear. "Indeed, the mark's explicit reference to the goods ('undies') and its display on the sign with the price of the goods reinforce the obvious and immediate significance of the mark as solely a product mark."

The Board distinguished the subject mark from several third-party marks for retail store services, because those marks [for example, "SAVE MONEY. LIVE BETTER"] are more in the nature of advertising slogans that "would be seen as referring to and identifying retail store services generally."

And so the Board affirmed the refusal to accept that specimen of use.

Turning to the specimen of use for online services (immediately below), is this screenshot a proper service mark specimen?

No, it is not. The Board noted that a webpage screenshot may be an acceptable specimen of use for services, but Applicant must establish that "purchasers would directly associate the mark with the online retail store services, per se, and that they would readily perceive and understand the mark to be a source indicator for those services, and not merely a product mark for the goods sold via the online retail store."

Again, this screenshot is a "display associated with the goods" and may suffice as a trademark specimen [it includes a link labeled "shop now], but it is not a proper service mark specimen. Again, although purchasers would know that applicant is rendering online services, such a "generalized association" does not suffice to create the requisite "direct association" between the mark and the services.

The fact that applicant's store is online does not change the analysis from that applicable to brick-and-mortar stores.

And so the Board affirmed the refusal to register.

Text Copyright John L. Welch 2010.


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