Tuesday, June 23, 2020

TTAB Affirms Rejection of Specimen That Fails to Associate the Mark with the Identified Services

The Board affirmed a refusal to register the design mark shown here,
for "advertising, marketing and promotional services," agreeing with Examining Attorney Martha L. Fromm that "the specimens do not demonstrate use of the applied-for mark for the identified services." In re On the way LLC, Serial No. 87037256 (June 10, 2020) [not precedential] (Opinion by Judge Albert Zervas].

Click on picture for larger image

An acceptable specimen must show “some direct association between the offer of services and the mark sought to be registered therefor.” A specimen is not acceptable "if it fails to convey a proper nexus between the mark and the services, or if the services are too attenuated from the proposed mark, either in terms of proximity or logical connection."

The proposed mark appears in the specimen on the left, but not on the right. The services are not mentioned or referred to in either of the screenshots. Applicant explained that it provides a navigational app by which others may advertise:

Specifically, when users view Applicant’s app and enter a destination address, Applicant’s app has the ability to display the locations of the goods and services of others along the way, thereby promoting the goods and services of other companies to the users. For example, once a destination address is entered into the app, the user can request the app show the locations of grocery stores on the way to their destination, thereby actually promoting and advertising the grocery store.

Once an address is entered, the user can find, say, a florist, grocery store, etc., along the route. The app will show appropriate goods or services, "thereby actually promoting and advertising the goods and services of other companies." The Board noted, however, that "there is no indication from the first screen whether coffee shops, gas stations, grocery stores, restaurants and banks located by the app are actually advertised on the app or whether they appear simply as informational as determined by Applicant’s algorithms as part of its navigational service."

The Board found that the first screen "does not create a direct association of Applicant's mark with Applicant's identified services." As to the second screen, "[i]t is not clear whether the red dots represent customers of Applicant who have chosen to take advantage of Applicant’s alleged advertising and promotional services, or appear there informationally for the user."

Moreover, Applicant has not indicated when the Albertsons bubble appears on the screen, e.g., directly after the user has indicated that he or she would like to see grocery stores along the route, or as a pop-up when the user drives near Albertsons.

Applicant did explain how businesses, as potential consumers of Applicant’s services, would view the mark, as shown in the first screen, and associate this mark with the identified services. Applicant focused on the perceptions of users of the app rather than the perception of potential consumers of Applicant’s services. Moreover, the Board agreed with the Examining Attorney that the reference in the second specimen to Albertons appears to be informational, rather than an advertisement.

In sum, nothing in the specimens demonstrates use of the mark for the identified services. And so the Board affirmed the refusal to register.

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Text Copyright John L. Welch 2020.


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