In an instructive decision for trademark applicants relying on social media to help advertise and promote their products and services, the Trademark Trial and Appeal Board (TTAB) in In re Florists' Transworld Delivery, Inc concluded that advertising and promoting via a social networking website does not, in and of itself, support a trademark registration for such services, unless the applicant is in the business of providing such services. As such, a trademark applicant utilising a social media platform to create an online community for users for the purpose of advertising and promoting its products and services generally cannot obtain a trademark registration for such services.

Facts

Florists' Transworld Delivery, Inc filed an intent-to-use application for the mark SAY IT YOUR WAY for both "[o]nline retail store services featuring flowers and gifts, and promoting the retail services of member florists" in International Class 35 and "[c]reating 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. In support of its application, Florists submitted the following specimen depicting a page from its Twitter profile:

Click here to view image.

The examiner refused registration, finding that the specimen did not show the applied-for mark being used in connection with the identified services in either class. A substitute specimen was submitted, containing more pictures from the Twitter profile. The examiner subsequently withdrew the refusal as to Class 35, agreeing that the pages properly depicted the mark as used in connection with online retail store services, but maintained the refusal as to Class 42, concluding that the specimen did not show use of the applied-for mark in connection with the applied-for services. Florists appealed, contending that it had "created its own smaller community, within the much broader Twitter sphere" for people interested in its product.

Decision

The TTAB agreed with the examiner. Referring to the Trademark Manual of Examining Procedure, the TTAB noted that Section 904.07(a) states that the submitted specimen must show "use for the specific goods/services identified". Moreover Section 1301.04(d) states that "registration must be refused if the specimen shows the mark is used only to promote goods rather than the identified services, or the mark is used as a service mark but not for the identified services (i.e., the applicant misidentified the services)".

Advertising materials can be submitted as specimens, but to be accepted must do one of two things:

  • show the mark advertising the identified services and form a direct association "by containing a reference to the specified service(s)" and using the mark so that it "identif[ies] and distinguish[es] the service(s) and source thereof"; or
  • show no reference to the identified services, but instead show the applicant using the mark to provide the identified services in a manner which "creates in the mind of the purchaser an association between the mark and the service activity".

The TTAB explained that the manual provides further guidance in Section 1301.04(h)(iv)(C), stating:

"Some applicants may mistakenly mischaracterize their services as 'social networking' because they assume that advertising or promoting their non-social-networking services via a social-networking website means they are providing social-networking services…Such a specimen is not acceptable…since it does not demonstrate that the applicant is providing [the applied-for] services."

In reaching its decision to uphold the refusal as to Class 42, the TTAB found the images linked in Florists' specimen to be merely pages of Florists' Twitter profile, showing the profile's home page, an entry from Florists' past tweets and a link from that entry which took users to a list of participants in an event sponsored by Florists. Thus the specimen did not show an advertisement for "creating an on-line community" or Florists providing the specified services. It simply showed Florists using an established online community to disseminate information and address consumer complaints. No new online community or platform was provided where users could craft a profile specific to Florists' services. While Florists argued that it provided a separately registrable service simply by virtue of being on Twitter's platform, the TTAB refused to accept that argument as support for the creation of an actual user forum; rather, it was merely use of an existing social networking site for the benefit of Florists. Any advertisement provided by Florists on its Twitter page was "merely incidental to the production or sale of goods". Thus Florists' submitted specimen was found to be insufficient to show use of its mark in association with the services identified in the application.

Comment

The TTAB's decision in In re Florists' Transworld Delivery, Inc is consistent with its decisions relating to applications that rely on advertising material to support registration of marks for the advertising and promotion of one's own products and services. The TTAB has repeatedly refused to allow trademark applicants to secure registrations for advertising and promotion-related services when the applicant is merely advertising and promoting its own products or services – as opposed to acting as an advertising or promotional agency whose services are retained for the benefit of others. In refusing to register the applicant's mark for "creating an on-line community of users", the TTAB has again made clear that the applicant's goods or services were not the creation of a social media site, but rather the sale and arranging for the sale and delivery of flowers. While it is often difficult for those unfamiliar with the nuances of trademark prosecution practice to understand, it is extremely important when drafting applications to ensure that the scope of the covered goods or services both reflects what the applicant will do under the mark and is consistent with what the US Patent and Trademark Office will accept.

For further information on this topic please contact Timothy J Kelly or Kathryn E Easterling by telephone (+1 212 218 2100) or email (tkelly@fchs.com or keasterling@fchs.com). The Fitzpatrick, Cella, Harper & Scinto website can be accessed at www.fitzpatrickcella.com.

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