A service mark is associated with services, rather than goods that may be associated with those services. For example, “Snap! Crackle! Pop!” is not a service mark because it is associated with breakfast cereal goods, and not with retail services for selling breakfast cereal. A service mark is used in commerce “when it is used or displayed in the sale or advertising of services.” 15 U.S.C. § 1127; see also 15 U.S.C. § 1053 (a service mark is “registrable, in the same manner and with the same effect as are trademarks”).

An Acceptable Specimen for Services

An acceptable specimen of use must show “some direct association between the offer of services and the mark sought to be registered therefor.” In re Universal Oil Prods. Co., 476 F.2d 653 (CCPA 1973); see also 37 C.F.R. § 2.56(b)(2) (“A service mark specimen must show the mark as used in the sale of the services, including use in the performance or rendering of the services, or in the advertising of the services”).

While the specimen “need not explicitly refer to those services in order to establish the requisite direct association between the mark and the services, . . . ‘there must be something which creates in the mind of the purchaser an association between the mark and the service activity.'” In re WAY Media, Inc., 118 USPQ2d 1697, 1698 (TTAB 2016) (quoting In re Johnson Controls, Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)). This is not necessarily binary, as a mark may be associated with both goods and services; but care should be taken in analyzing how the mark is used in commerce.

“To determine whether a mark is used in connection with the services described in the [application], a key consideration is the perception of the user.” In re JobDiva, Inc., 843 F.3d 936, 941 (Fed. Cir. 2016) (citation omitted).

Specimen for Retail Services

There is no rule that a mark for online retail store services must be located at the top of a web page; but, for advertisement specimens, “[i]n order to create the required ‘direct association,' the specimen must not only contain a reference to the service, but also the mark must be used on the specimen to identify the service and its source.” In re Osmotica Holdings Corp., 95 USPQ2d 1666, 1668 (TTAB 2010). See also In re Pitney Bowes, Inc., 125 USPQ2d 1417, 1419 (TTAB 2018) (noting applicant's explanation of the specimen and how applicant provides the services referenced on the specimen).

If a “specimen shows use of the mark in connection with goods rather than the identified services, the specimen must be refused for failure to show service-mark use in commerce in connection with the identified services.” TMEP § 1301.04(g)(i) (July 2021); see also TMEP § 1301.04(d).

Difference Between Mattresses and Retail Services for Selling Mattresses

The Trademark Trial and Appeal Board (“TTAB”) recently addressed a refusal to register the FLIPPABLE FIRMNESS mark for “online retail store services featuring bed frames, foundations, mattresses, pillows, toppers, and bed sheets” in International Class 35. In re Layla Sleep, Inc., Ser. No. 88359361 (TTAB Jun. 24, 2022).

The Examining Attorney at the U.S. Patent and Trademark Office (“USPTO”) had refused registration because the applied-for mark appeared to reference only the mattress and not retail store services featuring mattresses. The Examining Attorney asserted that because the sole place the mark appeared on the specimen was within a description of the qualities of a mattress, consumers would make a direct association only between the proposed mark and the mattress, and not with retail services.

A Feature of the Mattress Rather Than a Service for Selling Mattresses

On appeal, the TTAB affirmed, noting “the term FLIPPABLE FIRMNESS refers to a feature of a mattress as opposed to a FLIPPABLE FIRMNESS activity or service of selling mattresses.” The TTAB also noted that in each of the substitute specimens, the mark is preceded by “with” (or it's abbreviation).

There is nothing on any specimen that refers to, or even suggests, that there is such a thing as a FLIPPABLE FIRMNESS online retail store service. . . . Instead, the mark simply promotes Applicant's goods by describing a feature thereof. On each specimen the proposed mark is used merely in connection with goods used in the performance of the services.

The TTAB concluded that “none of Applicant's specimens shows the proposed mark used in a manner that creates in the minds of potential consumers a direct association between the mark FLIPPABLE FIRMNESS and the recited online retail store services.”

The trademark attorneys at Thomas P. Howard, LLC are experienced in prosecuting trademark applications before the USPTO, as well as in enforcing trademarks or defending against infringement claims in litigation nationwide including in Colorado.