The Trademark Trial & Appeal Board issued a precedential decision affirming a refusal to register a mark because there was no direct association between the specimen and the applied-for services. In re Gail Weiss, Serial No. 88621608 (July 31, 2024, TTAB) (Cataldo, Goodman, Pologeorgis, ATJ)

Gail Weiss applied to register the mark GABBY’S TABLE on the Principal Register 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.” Weiss submitted a specimen of use that consisted of “website marketing and advertising.” The Examining Attorney refused registration on the grounds that the specimen failed to show the mark in use in commerce in connection with the identified services. The Examining Attorney argued that the specimen only showed a list of items recommended for purchase, but the website did not offer the consumer retail store services to purchase the goods. Instead, the website included a “buy now” button that redirected customers to third-party websites that offered to retain store services to consumers. Weiss appealed.

The issue before the Board was whether the specimen demonstrated a direct association between the GABBY’S TABLE mark and the online retail store services identified in the application. The Board found that the specimen did not meet this requirement as it only provided referrals to third-party websites where the products could be purchased. The Board also noted that the specimen lacked the essential elements of online retail store services, such as a virtual shopping cart, pricing, shipping information or any other indicia of online retail store services. The Board also found that the third-party stores provided commissions to affiliate websites like those in the specimen but did not constitute providing online retail store services. The Board therefore affirmed the refusal to register.

Practice Note: This decision highlights the necessity for applicants to provide specimens that demonstrate the use of the mark in connection with the identified services.