Precedential No. 16: "GABBY'S TABLE" Specimen Fails to Show Use of Mark for Recited On-Line Store Services

The Board affirmed a refusal to register the mark GABBY'S TABLE for "Computerized on-line retail store services in the field of food, cooking utensils, cookware, culinary arts cookbooks, magazines and videos, and lifestyle books, magazines and videos" because the specimen of use showed that Applicant Gail Wiess "provides referrals of products for sale by third parties on their websites" and not the services recited in the application. In re Gail Weiss, Serial No. 88621608 (August 1, 2024) [precedential] (Opinion by Judge Peter W. Cataldo).

Section 1(a)(1) of the Trademark Act states that a use-based application must include "such number of specimens or facsimiles of the mark as used as may be required by the Director." Trademark Rule 2.56 requires that the specimen of use display the proposed mark "as actually used in commerce on or in connection with the goods or services identified."

Weiss's specimen comprised a webpage displaying a list of items that "Gabby's Table Recommends" for purchase. A picture of each item is displayed, along with a product description and a "buy now" button that re-directs the consumer to a third-party website where the item may be purchased (e.g., Amazon). The recommended items cannot be purchased directly via Weiss's website: "Applicant's specimen does not display, for instance, a virtual 'shopping cart' pricing, shipping information, or any other indicia of online retail store services."

In determining whether a mark is used in connection with the services recited in an application, "a key consideration is the perception of the user." In re JobDiva, Inc., 121 USPQ2d 1122, 1126 (Fed. Cir. 2016). Here, the evidence demonstrated that "any sales of the products referred by Applicant take place on third-party websites, and that it is the third parties who are providing the online retail store services."

Applicant has submitted no evidence to support her contention that consumers clicking the “BUY NOW” buttons on her website, upon being re-directed to a product description on a third-party vendor website where they may then purchase the product from that vendor, will perceive that Applicant herself is providing online retail store services. The evidence of record demonstrates that consumers may not consummate a purchase of goods recommended by Applicant from her own website. To the contrary, Applicant recommends and refers consumers to purchase products from third parties.

And so, the Board affirmed the refusal under Sections 1 and 45 of the Trademark Act.

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TTABlogger comment: Is this a WYHA? BTW, although the refusal was based on Section 1 and 45 of the Trademark Act, nowhere is Section 45 discussed in the opinion.

Text Copyright John L. Welch 2024.