According to the Trademark Trial and Appeal Board (“TTAB”), only social media platforms like Twitter, Facebook, and LinkedIn will be able to register a trademark for the service of providing an online community.
The TTAB issued the precedential decision on May 11, 2016, affirming an Examining Attorney’s refusal to register a trademark application for such services. Florists’ Transworld Delivery, Inc. (“the Applicant”), an online floral retailer and wholesaler, had applied to register SAY IT YOUR WAY 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.”
In order to show use of the mark, the applicant submitted printouts of its Twitter profile. Although the mark appears on the specimen, the Examining Attorney refused registration of the mark on the ground that the specimen failed to show use of the mark in connection with the service of providing an online community.
On appeal, the Applicant argued that it had created “its own smaller community, within the much broader Twitter sphere, for persons with an interest in flowers and related items.” The TTAB disagreed, holding that the Applicant was merely using Twitter to provide information about its products, answer inquiries from customers, and advertise promotional events.
While customers may appreciate the opportunity to interact with and learn more about Applicant and its services, the advertising and promotional purpose of the Twitter account was not “separately registrable” and instead was merely incidental to the production or sale of goods, according to the TTAB’s ruling. In sum, social networking in and of itself is not a registrable service unless the applicant has created a social media platform or forum separate and apart from any non-social networking goods or services.
Consistent with this decision, the Trademark Manual of Examining Procedure (“TMEP”) cautions that some applicants may mistakenly characterize their services as “social networking” and that specimens from social networking sites should be carefully scrutinized. TMEP 1301.04(h)(iv)(c).
Although unsurprising, the decision is a reminder to trademark applicants that advertising and informational services ancillary to the sale of goods or services cannot be registered as independent services. TMEP § 1301.01(b)(v).
However, brand owners can generally continue to use websites and social media printouts as specimens for services as well as goods, provided that orders for the goods can be placed from the website. TMEP § 904.03(i).
Additionally, although social media use may not be a registrable service, brand owners might consider seeking protection of their websites and online content by using one of the following services descriptions, all of which have been published in the Trademark Office’s Acceptable Identification of Goods and Services Manual:
- “Providing a website featuring information in the field of _____________”
- “Providing a website featuring non-downloadable videos in the field of _____________”
- “Providing a website used to place on-line commercial orders in the field of _____________”
“Providing a website featuring resources, namely, non-downloadable publications in the nature of _____________, in the field of _____________”