TTAB 2024 Series, Part 4: Use It or Lose It - Specimens, Services & Expungement

This is Part 4 of our 6-part series on the TTAB's 30 precedential decisions from 2024. Read Part 3 on Descriptiveness →

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"Use it or lose it" isn't just a saying in trademark law—it's the foundational principle. In 2024, the TTAB issued four precedential decisions reinforcing that trademark rights depend on actual, ongoing use in commerce.

These decisions arrive as the USPTO expands its expungement and reexamination proceedings, making proof of use more important than ever.

The Foundation: Why Use Matters

Unlike patents and copyrights, trademark rights in the U.S. flow from use, not registration. Registration provides important benefits (nationwide priority, presumption of validity, access to federal courts), but it doesn't create rights out of thin air.

This means:

• No use = no rights (eventually)
• Specimens must show real use in commerce
• Maintenance filings require continued use across all claimed goods/services
• Unused registrations can be challenged and cancelled

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Decision 1: GABBY'S TABLE - Specimen Failure for Online Services

Case: Precedential No. 16 Outcome: Specimen failed for online store services

What Happened

The applicant submitted a specimen to support registration of GABBY'S TABLE for online retail store services. The examining attorney—and ultimately the TTAB—found the specimen inadequate.

The TTAB's Analysis

For service marks, specimens must show the mark used in rendering or advertising the services. The Board found that the submitted specimen didn't adequately demonstrate use of the mark in connection with the claimed online retail services.

Common specimen failures for online services:

• Screenshots that don't show the mark prominently
• Pages that don't clearly indicate what services are offered
• Marketing materials divorced from actual service delivery
• Generic website pages without service-specific content

Why It Matters

Online businesses face particular scrutiny because the connection between mark and service isn't always obvious from a screenshot. You need specimens that clearly show:

1. Your mark
2. In use with
3. The specific services claimed

Practical tip: For online service marks, capture complete screenshots showing your mark prominently displayed in connection with the services. Include URLs, dates, and context about what the page demonstrates.

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Decision 2: SMARTLOCK - Expungement for Nonuse

Case: Precedential No. 14 Outcome: Expungement decisions upheld based on nonuse

What Happened

SMARTLOCK registrations were challenged through expungement proceedings—a relatively new tool allowing anyone to petition for cancellation of marks that were never used for the claimed goods/services.

The TTAB's Analysis

The Board upheld the expungement, finding that the registrant couldn't demonstrate use of the mark for the goods/services in question. Key points:

• Expungement is a real threat - The USPTO is actively using this tool
• The burden shifts to the registrant once a prima facie case of nonuse is established
• Vague or unsupported claims of use won't survive scrutiny

Why It Matters

Expungement proceedings (available since December 2021) let third parties—including competitors—challenge registrations based on nonuse. The SMARTLOCK decision shows the TTAB will enforce these challenges.

Practical tip: Audit your registrations. For each one:

• Can you prove use on every listed good/service?
• Do you have dated specimens?
• Are your maintenance filings accurate?

If not, consider proactive correction before someone else files a petition.

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Decision 3: Retail Service Qualification

Case: Precedential No. 17 Outcome: Retail offering qualifies as "service" under Trademark Act

What Happened

This case addressed whether retail services—the service of bringing together various goods for customer selection—qualifies as a registrable service.

The TTAB's Analysis

The Board confirmed that retail services are registrable services under the Trademark Act. However, the registration must accurately describe the nature of the retail services offered.

Why It Matters

Retail brands should register for retail services, not just the goods they sell. But this requires:

• Proper identification of services ("retail store services featuring [goods]")
• Specimens showing the mark in retail service context
• Actual operation of retail services

Practical tip: If you operate retail (online or brick-and-mortar), consider separate registration strategies for your goods and your retail services. They're different—and the specimens differ.

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The Specimen Requirements Deep Dive

For Goods (Trademark)

Acceptable specimens for goods typically include:

• Product packaging showing the mark
• Labels and tags on the product
• Product displays at point of sale
• Website pages showing the mark associated with goods for sale

For Services (Service Mark)

Acceptable specimens for services typically include:

• Advertising that shows the mark and refers to the services
• Website pages showing the mark with service information
• Business signage where services are rendered
• Marketing materials describing the services

Common Failures

Specimens fail when they:

• Don't show the mark as applied for
• Don't clearly connect to the claimed goods/services
• Are mockups or prototypes rather than actual marketplace use
• Are internally-facing (invoices without the mark prominently featured)
• Are undated or lack context

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Maintenance Calendar

Don't miss critical deadlines:

Deadline	What's Due	Consequence of Missing
Years 5-6	Section 8 Declaration + Section 15 (optional)	Registration cancelled
Year 10	Section 8 + Section 9 (renewal)	Registration expires
Every 10 years after	Section 8 + Section 9	Registration expires

Each filing requires:

• A verified statement of continued use
• A specimen for each class
• Payment of fees

No extensions are available for Section 8 filings once the grace period expires.

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Up Next: Part 5 - Procedure & Evidence

In Part 5, we'll examine how procedural decisions—discovery, evidence, summary judgment—can make or break TTAB cases.

Read Part 5: Procedure & Evidence →

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Never Miss a Maintenance Deadline

GleanMark tracks your trademark portfolio and alerts you before critical deadlines. Don't let a registration lapse because you missed a filing date.

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This article is for informational purposes only and does not constitute legal advice. Consult with a qualified trademark attorney for guidance on your specific situation.

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Sources:

• TTAB Reading Room
• The TTABlog's 2024 Precedential Decisions Summary
• November 2025 TMEP
• USPTO Expungement & Reexamination Information