June 13, 2016

Trademark applicant’s Twitter account not service mark use for social media services

By Joshua A. Partington, Associate

Harness the Lesson: A trademark is in use only for services that are being offered primarily for the benefit of others.  Advertising or promoting your own products does not necessarily qualify as use of the mark for those services.

Florists

Florists’ Transworld Delivery, Inc. (“Florists”) filed an application to register their SAY IT YOUR WAY trademark in Class 35 and in Class 42 for [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.”

The application was allowed and Florists filed a Statement of Use submitting the profile page for its Twitter account as proof of use for the Class 42 services.  After this was rejected by the examining attorney, Florists submitted additional pages from its Twitter account showing interactions with customers.  The examining attorney also rejected this evidence because it showed Twitter as the social media service and Florists as merely a user of those services.

In its appeal to the Trademark Trial and Appeal Board (“TTAB”), Florists contended that it had, “created its own smaller community, within the much broader Twitter sphere.”  An acceptable service mark specimen can show the mark in connection with the advertising of the services or show use of the mark in connection with the rendering of the service.  But in this precedential decision, the TTAB ruled that the Twitter pages, “show[ed] only that Applicant is using the online community created by Twitter to provide information to its customers, to answer inquiries and respond to complaints, and to advertise promotional events.”  Doing these things on Twitter did not provide a service that allowed others to, “create a profile, establish a homepage, and attract further followers.”  And so the refusal to register the Class 42 services was affirmed.

Case: In re Florists’ Transworld Delivery, Inc., Appeal of Application No. 85/164,876 (TTAB May 11, 2016).