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09/28/2016
Inside Counsel

Say It Your Way, But Do It for Others

Self-serving activities not registrable as services, says TTAB.
Scott J. Slavick

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"The best way to find yourself is to lose yourself in the service of others," said Mahatma Gandhi. Modern companies seeking to register a trademark for a service at the U.S. Patent and Trademark Office may be wise to consider Gandhi's worldview.

A common misperception with regard to providing services is that simply offering them is an opportunity to register them for trademark protection. I've frequently heard clients who wanted to register their marks in connection with advertising services say so. But as far as trademark registration is concerned, advertising your own services is not enough. You have to advertise others' services to be considered a provider of advertising services.

The misperception persists, but has shifted from advertising services to social networking services. In In re Florists' Transworld Delivery Inc., Serial No. 85164876 (May 11, 2016), the USPTO's Trademark Trial and Appeal Board upheld the USPTO's registration for the mark Say It Your Way for "online retail store services featuring flowers and gifts, and promoting the retail services of member florists."

However, the TTAB affirmed an examiner's refusal to register the mark 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."

FTD's specimens of use comprised its Twitter profile page and several related web pages. The question was whether FTD was providing the services of "creating an on-line community."

The Board ruled that FTD's Twitter page did not offer a social networking service as a separable service to others, but rather as merely incidental to the sale of its own goods. It pointed to a recent revision to the Trademark Manual of Examining Procedure (TMEP) that cautioned examining attorneys to carefully examine social networking sites to ensure that the mark in question is being used with the recited services.

The TMEP explains that some applicants may mischaracterize their services as "social networking" because they mistakenly assume that promoting non-social networking services on a social networking web site means they are providing social networking services.

The Board cited an example in the TMEP in which a pet shop files an application for "online social networking services" and provides a Facebook page as a specimen, but in fact operates a retail store and only uses Facebook to advertise its store and communicate with customers. Such a specimen is not acceptable since it does not demonstrate that the applicant is providing social networking services.

FTD argued that it had created its own sub-community within Twitter, but the Board was not convinced. It explained that FTD had done nothing more than use Twitter as a forum to engage in social networking for its own benefit, and to advertise its online retail services, which are rendered through the company's website.

Moreover, the Board found that activities such as providing information about flowers or conducting events to promote the sale of flowers were merely incidental to FTD's primary services—for which it had granted registration—but did not constitute a separate registrable service. Therefore, it affirmed the USPTO examiner's refusal to register the mark.

What can we say about this ruling? That in order for a service to be registrable, it must primarily benefit someone other than the applicant. A company that advertises the sale of its own goods or services is doing so for its own benefit, while an advertising agency that promotes the products of its clients provides a service for others.

A company that sets up a personnel department to employ workers is merely facilitating the conduct of its business, while a company that recruits and places workers on behalf of other companies is performing employment agency services.

The controlling question is who primarily benefits from the activity for which registration is sought. If the activity is done primarily for the benefit of others, the fact that the applicant derives an incidental benefit is not fatal. On the other hand, if the activity primarily benefits the applicant, it is not a registrable service even if others derive an incidental benefit.


Reprinted with permission from the September 28, 2016 edition of Inside Counsel© 2016 ALM Media Properties, LLC. All rights reserved. Further duplication without permission is prohibited, contact 877-257-3382 or reprints@alm.com.

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