Faulty Specimen Sinks YACHTLY Application for Yacht Chartering Services

The Board has decided 16 appeals from specimen refusals this year and has reversed half of them. Here is the 17th. The Board upheld this refusal to register the proposed mark YACHTLY for "yacht chartering services" because the specimens of use failed to show a direct association with the identified services. In re Yachtly Inc., Serial No. 90784139 (November 6, 2024) [not precedential] (Opinion by Judge Lawrence T. Stanley, Jr.).

Applicant's original specimen was a printout from its website, shich showed the mark YACHTLY used with payment processing services but not yacht chartering services. When that specimen was rejected, Apppicant submitted substitute specimens, described as "screen shots of user interface screens showing the mark and rendering the yacht chartering services; photographs of employees with the mark on their clothing while promoting the services; a photograph of business signage." Examining Attorney Jaclyn Kidwell Walker maintained: "It is clear based on all the attached evidence that applicant ONLY provides yacht payment services and does not engage in the chartering services themselves."

A service mark specimen consisting of advertising or promotional materials generally must show a “direct association” between the mark and the services for which registration is sought. *** While the exact nature of the services does not need to be specified in the specimen, there must be something which creates in the mind of the purchaser an association between the mark and the services that have been recited in the application. *** A specimen that shows “only the mark with no reference to, or association with, the services does not show service mark usage.” [citations omitted].

As to the original specimen, the Board agreed with the Examining Attorney: "the Original Specimen indicates that Applicant provides a 'payment platform' for consumers that themselves charter yachts. 'Payment processing services' are different than 'yacht chartering services.' Accordingly, we find that the Original Specimen does not make a direct association or reference to the identified 'yacht chartering services.'"

As to the substitute specimens, the user interface screens included a list of booked charters with yacht names, charter IDs, broker names, date added, start dates, and other information in connection with third-party charters. The Examining Attorney argued that "[a] reasonable reading of the dashboard specimen suggests that applicant is not providing charter services, but rather tracking the charters of others and processing payments through their proprietary downloadable software."

Applicant contends that "it provides comprehensive yacht chartering services under the ‘Yachtly’ mark through its website and user interface by connecting, coordinating and managing the abovementioned providers and requirements that are necessary to charter a yacht."

The Board sided with the Examining Attorney: "none of the user interface screens identify Applicant as the one chartering a yacht. While Applicant’s counsel asserts that there are several providers involved in a yacht charter, and that Applicant “connect[s], coordinat[es] and manag[es]” these different providers, the evidence of record supports that Applicant does not charter yachts itself."

Nothing in record demonstrates that consumers would perceive the applied-for mark as a source indicator for “yacht chartering services.” To the contrary, the record supports that a consumer would understand that Applicant provides a payment platform for persons that themselves charter yachts. In other words, one who provides yacht chartering services brings their booked yacht charters to Applicant, and Applicant provides a service that helps that person or entity manage their yacht charters, namely via Applicant’s payment platform.

As to the clothing and business signage, the Board again agreed with the Examining Attorney: "The applied-for [proposed] mark appearing on an employee shirt or at a booth at a trade association event fails to show a direct association between the applied-for mark and the identified “yacht chartering services.” There is no information on the clothing or banners making a direct association between use of the applied-for mark and “yacht chartering services.”

And so, the Board affirmed the refusal.

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TTABlogger comment: WYHA? If Applicant is rendering yacht chartering services, you would think it could come up with a price chart or schedule or something.

Text Copyright John L. Welch 2024.