IP Law Daily, TRADEMARK—TTAB: ’GABBY’S TABLE’ mark for online culinary and lifestyle retail services denied registration, (Aug 2, 2024)

By Saurabh Kashyap, B.A., LL.B., LL.M.

Specimen failed to show the proposed mark being commercially used for identified services.

In a precedential decision, the Trademark Trial and Appeal Board (TTAB) affirmed a Trademark Examining Attorney’s refusal to register the proposed mark GABBY'S TABLE (standard characters) for computerized online retail store services. The Board cited the insufficiency of the specimen provided, which failed to show the applied-for mark in use in commerce in connection with the identified services. The specimen instead showed that the applicant’s website redirected consumers to third-party websites like Amazon.com where the goods were offered for sale (In re Weiss, Serial No. 88621608 (T.T.A.B. July 31, 2024)).

Background. The applicant, Gail Weiss, operates an online platform offering a curated selection of products related to food, cooking utensils, cookware, culinary arts cookbooks, magazines, videos, and lifestyle books and videos. Her business model focuses on providing product recommendations and facilitating purchases through affiliate links.

Weiss applied to register the mark GABBY'S TABLE on the Principal Register in International Class 35 for “computerized online retail store services in the field of food, cooking utensils, cookware, culinary arts cookbooks, magazines and videos, and lifestyle books, magazines and videos.” The application, filed under Section 1(b) of the Trademark Act, claimed a bona fide intent to use the mark in commerce.

The application was initially refused under sections 1 and 45 of the Trademark Act, which require a specimen showing the mark used in commerce in connection with the identified services. The Trademark Examining Attorney found that the specimen did not demonstrate a direct association between the mark and the retail services claimed. Weiss appealed the refusal and requested reconsideration. When the refusal was made final, the appeal resumed.

Procedural issues. Before addressing the merits, the TTAB dealt with procedural matters. Weiss's requests for judicial notice of third-party registrations and internet hyperlinks were denied. The Board reiterated that to introduce evidence after an appeal has been filed, one must request a suspension of the appeal and remand the application for further examination.

Service mark specimen analysis. The TTAB reviewed the applicable law regarding service mark specimens, emphasizing that a service mark must be used in a manner that readily identifies the services. The Board referenced In re Siny Corp., 920 F.3d 1331 (Fed. Cir. 2019) to highlight the requirement of a direct association between the mark and the services.

Examining attorney's arguments. The examining attorney argued that the specimen showed a list of recommended products with “BUY NOW” buttons that redirected consumers to third-party websites like Amazon, Cuisinart, and Queen Creek Olive Mill. These third-party websites, not Weiss's platform, offered retail store services. Consequently, the specimen did not demonstrate the use of the mark in connection with the claimed retail services.

The examining attorney provided evidence showing that clicking on the “BUY NOW” buttons on Weiss's website redirected users to product pages on third-party sites where the purchases were completed. The Trademark Examining Attorney stated that the lack of direct association between the mark and the services rendered the specimen insufficient under the Trademark Act.

Applicant's arguments. Weiss contended that her website allowed consumers to purchase recommended products directly through third-party payment processors, comparing her services to those of a consignment store. She argued that using the “BUY NOW” buttons should be sufficient to show use in commerce. Additionally, Weiss claimed that her participation in the Amazon Associates program effectively constituted an online retail store service.

Weiss also pointed to third-party registrations, including Amazon and Etsy, arguing that her services were similar and should be treated likewise. She maintained that her website's structure, facilitating direct purchases through affiliate links, should be considered a valid retail service.

TTAB's analysis. The Board found that Weiss's specimen did not show a direct association between the mark and the retail services. The specimen merely displayed the mark on a webpage with affiliate links, which did not constitute retail store services. The TTAB emphasized that the ability to complete purchases was crucial for establishing a direct link to retail services, which Weiss's specimen lacked.

The TTAB cited In re Quantum Foods Inc., 94 USPQ2d 1375 (TTAB 2010), and In re Universal Oil Prods. Co., 476 F.2d 653 (CCPA 1973), reinforcing the requirement for a direct association between the mark and the services. The evidence showed that consumers were redirected to third-party websites to complete purchases. Thus, Weiss's platform did not provide the retail services claimed.

The Board noted that the allowance of third-party registrations, such as those for Amazon and Etsy, did not necessarily establish the sufficiency of Weiss's specimen. Each case must be decided on its own merits, and Weiss's specimen did not meet the required standards.

Conclusion. Finally, the TTAB affirmed the refusal to register “GABBY'S TABLE” on the grounds that the specimen did not show the mark in use in commerce for the identified services.

The Case is Serial No. 88621608.

Judge: Cataldo, P.

Attorneys: Richard S. Ross (Richard S. Ross, Attorney at Law) for Gail Weiss. Andrea Cornwell for the USPTO.

Cases: Trademark USPTO