New York Trademark Attorney Blog
Florists’ Transworld Delivery Inc. (the “Applicant”) attempted to register its mark, a slogan, SAY IT YOUR WAY for two types of services. Only one service is at issue on appeal before the Trademark Trial and Appeal Board (the “Board”). The Examining Attorney refused the application for “creating an on-line community for registered users to participate, in discussions, get feedback from their peers, form communities, and engage in social networking featuring information on flowers, floral products, and gifts” in international class 42. The refusal was based on the applicant’s specimen failing to show the mark used with the services identified in Applicant’s trademark application. Applicant attempted to submit a substitute specimen that also failed to evidence the mark used with the relevant services. See In re Florists’ Transworld Delivery, Inc. Serial No. 85164876 (May 11, 2016).
Applicant’s specimen consisted of pages from his Twitter account located at https://twitter.com/ftdflowers. Applicant argued that the pages reflected discussions between the Applicant, its fans and customers. He further argued that Twitter is a social media service that permits its users to post short messages and for the messages to be viewed by those who follow that user’s account. In circumstances of a service mark application, the specimen must show the trademark as used in the sale or advertising of the services. See In re Graystone Consulting Assocs., Inc. 115 USPQ2d 2035 (TTAB 2015), where it was held that a service mark must be used in a manner that is readily perceived as identifying the services by relevant consumers. This is determined by a thorough review of the specimens.
Service mark specimens typically consist of advertising, promotional, and informational material and these may include pages from a website or pages from a Twitter account. However, the pages must show the mark in the advertisement of the services identified in the trademark application and create an association between the mark and the services. Use of the trademark must also identify and distinguish the services. This point is illustrated in the case In re Johnson Controls, Inc. 33 USPQ2d 1320 (TTAB 1994).
The Board referenced a revision to the Trademark Manual of Examining Procedure (the “TMEP”) that warned examining attorneys to thoroughly review webpages from social-networking sites to ensure that the trademark is being used with the identified services. See Section 1301.04(h)(iv)(C) of the TMEP (April 2016). For example, if an applicant submits a Facebook page as a specimen for “online social networking services” when in reality the applicant operates a retail store and simply uses its Facebook page to promote its retail services, the specimen will be refused. The grounds for refusal of this hypothetical application would be the same grounds the examiner cited for the case at bar( under Trademark Act Sections 1 and 45, 14 U.S.C. §§1051 and 1127). The specimen would have failed to show the mark in use with the identified services similar to the case at bar.
In this case, the Applicant has not created an on-line community that others can use, nor has he created a platform for followers to create a profile and attract other followers. It appears that the Applicant is simply using the already established on-line community that was created by Twitter to provide information to customers and to promote events. Applicant merely uses its mark SAY IT YOUR WAY to advertise its presence on Twitter’s online community.
The Board concluded that Applicant’s mere presence on Twitter’s social media platform does not rise to the level of a separable registrable service for ” creating an on-line community for registered users to participate in discussions, get feedback from their peers…” The Board affirmed the refusal to register the trademark application for international class 42. Trademark applicants should not assume examining attorneys will accept their specimens. This part of the trademark prosecution should not be overlooked. See our webpage entitled, Acceptable Trademark Specimens, for more information on this topic. Applicants should have trademark counsel review any specimen prior to submission to the United States Patent & Trademark Office. Please feel free to contact our office for a courtesy consultation and we would be happy to review your trademark specimen.