ANOTHER TRADEMARK APPLICATION SPECIMEN BITES THE DUST AND PREVENTS TRADEMARK REGISTRATION

Background on Specimen Requirements for Trademark Registration

So the applicant for registration of a trademark has met the threshold requirements:? 1) there is no likelihood of confusion with existing marks; 2) the mark is not merely descriptive of the goods/services; and 3) the mark is not generic.? Will the mark be registered? Not necessarily.? One registration requirement that many find confusing is the USPTO’s specimen requirement.? A specimen is documentary proof showing how the mark is used in commerce for the application’s specified goods and/or services. The lack of an appropriate specimen will prevent registration of the mark.?

I have previously blogged about cases where the mark was not registered by the examining attorney as the result of faulty specimens. The refusal can be very costly from appeals’ costs if the applicant chooses to appeal the examining attorney’s decision to having an impact on the value of the applicant’s mark/brand.? Registered marks are generally substantially more valuable than common law marks.?

As an IP attorney who has filed many trademark applications over the years, I have always been very picky about the nature of the specimens provided to the USPTO on behalf of the applicant. For example, I work with clients to ensure that their websites meet the requirements for website-based specimens and have required modifications of the existing websites to provide “good” specimens.? I also work with clients to ensure that labels, packaging, and marketing materials show a direct link between the goods/services, the mark, and the provider of the goods/services under the mark. ?Importantly, it is essential that the original description of goods and services is correct from the get-go to ensure that the specimen(s) will indeed “match” the specified goods/specimens.

The In re Yachtly Inc. Decision

The recent decision by the Trademark Trial and Appeal Board (TTAB) in In re Yachtly Inc., Serial No. 90784139 (November 6, 2024) supports the above statements.? In Yachtly, the Applicant's original specimen was a printout from its website, which showed the mark YACHTLY used with payment processing services.? The Applicant’s specified services were for yacht chartering services, not payment processing services. When that specimen was rejected, Applicant submitted substitute specimens, described as "screen shots of user interface screens showing the mark and rendering the yacht chartering services; photographs of employees with the mark on their clothing while promoting the services; and a photograph of business signage." The examining attorney maintained that "It is clear based on all the attached evidence that applicant ONLY provides yacht payment services and does not engage in the chartering services themselves."

Yacht chartering is the practice of renting, or chartering, a sailboat or motor yacht and traveling to various coastal or island destinations. ?Obviously, the chartering person/party must for such services as an ancillary activity.?

A service mark specimen consisting of advertising or promotional materials generally must show a “direct association” between the mark and the services for which registration is sought. While the exact nature of the services does not need to be specified in the specimen, there must be something which creates in the mind of the purchaser an association between the mark and the services that have been recited in the application. A specimen that shows “only the mark with no reference to, or association with, the services does not show service mark usage.” [citations omitted].

As to the original specimen, the Board agreed with the Examining Attorney: "the Original Specimen indicates that Applicant provides a 'payment platform' for consumers that themselves charter yachts. 'Payment processing services' are different than 'yacht chartering services.' Accordingly, we find that the Original Specimen does not make a direct association or reference to the identified 'yacht chartering services.'"

As to the substitute specimens, the user interface screens included a list of booked charters with yacht names, charter IDs, broker names, date added, start dates, and other information in connection with third-party charters. The Examining Attorney argued that "[a] reasonable reading of the dashboard specimen suggests that applicant is not providing charter services, but rather tracking the charters of others and processing payments through their proprietary downloadable software."

Applicant contends that "it provides comprehensive yacht chartering services under the ‘Yachtly’ mark through its website and user interface by connecting, coordinating and managing the abovementioned providers and requirements that are necessary to charter a yacht."

The Board sided with the Examining Attorney: "none of the user interface screens identify Applicant as the one chartering a yacht. While Applicant’s counsel asserts that there are several providers involved in a yacht charter, and that Applicant “connect[s], coordinat[es] and manag[es]” these different providers, the evidence of record supports that Applicant does not charter yachts itself."

Nothing in record demonstrates that consumers would perceive the applied-for mark as a source indicator for “yacht chartering services.” To the contrary, the record supports that a consumer would understand that Applicant provides a payment platform for persons that themselves charter yachts. In other words, one who provides yacht chartering services brings their booked yacht charters to Applicant, and Applicant provides a service that helps that person or entity manage their yacht charters, namely via Applicant’s payment platform.?

As to the clothing and business signage, the Board again agreed with the Examining Attorney: "The proposed mark appearing on an employee shirt or at a booth at a trade association event fails to show a direct association between the proposed mark and the identified “yacht chartering services.” There is no information on the clothing or banners making a direct association between use of the proposed mark and “yacht chartering services.

What Went Wrong?

The Yachtly Applicant has spent a lot of money to date on its application. It could still appeal to a federal court but the author opines that such an appeal would be futile.? ?It’s a shame because even though the mark was otherwise approved, it won’t be registered.? It is the author’s opinion that the application's description of services may well have been incorrect or incomplete from the get-go.? Based on the Applicant’s website, a better description might have been: Yacht chartering support services, namely, providing centralized processing payment services for use by yacht charterers.?

The Yachtly decision demonstrates why trademark attorneys must “dig” into the actual nature of the services associated with the mark to try and avoid a mishap down the road.? ?Indeed, the description of services is often not quite as straightforward as the description of goods. Compare, e.g., a clothing description under IC 025 (T-shirts and baseball-style caps) with an entertain/education description under IC 041 (Entertainment services, namely, providing videos and podcasts in the field of business development and sustainability). Ultimately, however, it is up to the Applicant to thoroughly explain their services/goods to their attorney for proper delineation by the Attorney in the application.

Take Home Points:? Specimens must show a direct affiliation with the services/goods specified in the trademark application's description of services/goods for the mark to be registered.

In Need of Legal Counsel on Trademark Matters? Trademark law is a complex area of the law.? Contact Susan at 305-279-4740 for all matters related to trademark law from registration to proceedings before the Trademark Trial & Appeal Board. ?

THANK YOU FOR YOUR INTEREST IN THIS BLOG.? AS USUAL, THE CONTENT IS FOR????????? INFORMATIONAL PURPOSES ONLY AND IS NOT LEGAL ADVICE.

? 2024 by Troy & Schwartz, LLC

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