TTAB Affirms Refusal Because Specimens Show Use of Mark with Mobile App but not SAAS

The Board upheld a specimen refusal for the mark HEARTIFY & Design for software as a service (SAAS) featuring software for providing health-related data and information, in Class 42. Applicant's specimen of use displayed the mark in connection with a mobile phone app, but not with SAAS. In re Heartify LLC, Serial No. 97768868 (November 12, 2024) [not precedential] (Opinion by Judge Mark A. Thurmon).

Examining Attorney Marco Wright and the applicant agreed that "SAAS refers to 'a method of software delivery and licensing in which software is accessed online via a subscription, rather than bought and installed on individual computers.'" SAAS is somewhat similar to downloadable software in International Class 9, but for SAAS, the software resides on the service provider’s system. Applicant submitted specimens showing mobile phone applications, but not SAAS services.

Applicant only argument was that one of the mobile phone screenshots shows a tab for account information. Applicant argued that this tab directs a user to its website, where the user would then receive SAAS services relating to the user’s account. The Board pointed out, however, that "[t]he statutory definition of service mark use does not allow for the indirect 'chain-of-events' type of use Applicant argues for here."

None of the specimens submitted by Applicant "show anything resembling SAAS services. Every specimen shows or provides information about Applicant’s mobile phone application. We agree with the Examining Attorney that these specimens fail to show use of Applicant’s mark in connection with the SAAS services in International Class 42. The specimen refusal was proper."

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TTABlogger comment: Applicant's class 9 software was supported by the specimens of use.

Text Copyright John L. Welch 2024.