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

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

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A trademark registration is only as strong as the use behind it. The TTABlog's year-end roundup of the Board's 30 precedential decisions from 2024 groups four of them under use and nonuse. This part covers three; the fourth, the BLOOKE cancellation (Precedential No. 18), is in Part 1.

One of the three came out of expungement, a newer way to clear unused registrations off the register that the Trademark Modernization Act of 2020 created.

The Foundation: Why Use Matters

In the U.S., trademark rights come from using a mark in commerce, not from registering it. Registration adds important benefits (nationwide priority, a presumption of validity, the right to use the ® symbol), but it doesn't create rights out of thin air.

This means:

• No use = no rights (eventually)
• Specimens must show real use in commerce for the goods or services you listed
• Maintenance filings require continued use for every good or service you keep in the registration
• Unused registrations can be challenged and canceled

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

Case: Precedential No. 16, In re Gail Weiss (July 31, 2024) Outcome: Refusal affirmed; the specimen did not show online retail store services

What Happened

Gail Weiss applied to register GABBY'S TABLE for computerized online retail store services in the field of food, cookware and cookbooks, among other things. Her specimen was her own website, where recommended products each had a "buy now" button. The examining attorney refused registration because the specimen did not show the mark in use for those services.

The TTAB's Analysis

The Board agreed the specimen displayed the mark. The problem was the services. Retail services mean selling goods to consumers, so the question was whether shoppers could buy from Weiss's website. They could not: the "buy now" buttons sent them to third-party sites such as Amazon, where they bought from that seller. Her pages had no shopping cart, no pricing and no shipping information. The record showed "that applicant provides referrals of products for sale by third parties on their websites," not online retail store services.

Why It Matters

If shoppers complete the purchase on someone else's site, your site is not a retail store, whatever the page calls itself.

Practical tip: Before you submit a specimen for retail store services, check that a shopper can actually buy from you on that page: prices, a cart or checkout, delivery details. If your site only recommends products, ask your attorney about an identification that describes what you really do. And a web page specimen must include its URL and the date it was accessed or printed.

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Decision 2: SMARTLOCK - Expungement for Nonuse

Case: Precedential No. 14, In re Locus Link USA (July 1, 2024) Outcome: The USPTO's decisions to cancel both registrations were affirmed

What Happened

Locus Link USA owned two registrations, SMARTLOCK and SMART LOCK, both for "components for air conditioning and cooling systems, namely, evaporative air coolers." In July 2022, a third party petitioned the USPTO to expunge both, alleging that the marks had never been used in commerce for those goods. The USPTO instituted expungement proceedings and decided to cancel both registrations, and Locus Link appealed.

The TTAB's Analysis

Locus Link sold real products under the marks: connectors for the tubes and valves in cooling systems such as air conditioners and evaporative air coolers. It agreed it did not sell finished evaporative air coolers, but argued that its registrations covered components for them.

The Board disagreed. The words after "namely" define the wording before it, so the identification covers evaporative air coolers that are components of larger cooling systems, not parts for evaporative air coolers such as Locus Link's connectors. Nor did it matter that Locus Link's identification and specimen had been accepted during examination: "the acceptance of specimens by the examining attorney does not control the ultimate question of use." Because the marks had never been used in commerce for the goods as identified, the Board affirmed the decisions to cancel both registrations.

Why It Matters

Expungement petitions have been available since December 27, 2021. Any third party can file one, a competitor included, and expungement must be requested between three and ten years after the registration date. The USPTO Director can also start a proceeding on the Director's own initiative.

Practical tip: Audit your registrations. Read each identification literally, especially the words after "namely," and make sure you can prove use for every item. If something doesn't match, talk to your attorney now. Deleting goods or services from a registration before you file a maintenance document has a $0 USPTO fee. Once a proceeding starts, you can still delete goods or amend the registration, but an amendment can only narrow the identification or make changes that would not require republishing the mark.

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Decision 3: Selling Your Own Goods Online Is a Retail Service

Case: Precedential No. 17, Blizzard Entertainment, Inc. v. Ava Labs, Inc., Opposition No. 91285851 (July 18, 2024) Outcome: Ava Labs' counterclaims to cancel two of Blizzard's registrations were dismissed

What Happened

Blizzard opposed Ava Labs' application to register BLIZZARD for crypto and blockchain business and investment services, relying on its own registrations for online retail store and mail order services featuring clothing, books, mouse pads, toys and games. Ava Labs counterclaimed to cancel those registrations, arguing that selling only your own branded goods is not a service under the Trademark Act. For its motion, Blizzard accepted that its stores sold only its own branded goods.

The TTAB's Analysis

A service must be performed for the benefit of someone other than the provider and be more than what selling the provider's goods necessarily involves. The Board held that online retail store and mail order activities featuring your own goods qualify: they "primarily benefit consumers in that the activity provides a central location to find, examine, and purchase various goods," even though the retailer also benefits. The law does not distinguish between stores that sell their own brand and stores that sell other brands. The counterclaims were dismissed, and the opposition went forward.

Why It Matters

Read Decisions 1 and 3 together: the service is the selling. Blizzard's stores sold its own goods to customers, and that counts. Weiss's site sold nothing; it sent shoppers elsewhere.

Practical tip: If you sell your own products through your own online store, consider registering your mark for the store as well as the products. Blizzard's identification names the service first, then the goods the store features. Your specimen for the store should show customers buying from you.

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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 that show the mark with the goods and give a way to order them

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 connect the mark to the goods or services listed
• Are mockups or digital renderings rather than actual marketplace use
• Are business paperwork, such as invoices, offered for goods
• Are web page captures without the page's URL and access or print date

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Maintenance Calendar

Don't miss critical deadlines:

Each deadline is followed by a 6-month grace period, with an added surcharge.

Each Section 8 declaration requires:

• A verified statement that the mark is in use in commerce (or facts showing excusable nonuse)
• One specimen showing current use for each class
• The fee for each class

No extensions are available once the six-month grace period ends. The USPTO has no authority to waive the deadline.

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Up Next: Part 5 - Procedure, Evidence & Special Topics

In Part 5, the final part of the series, we cover the procedural rulings (discovery, admissions, summary judgment, the META opposition and sovereign immunity), plus the LEATHERNECKS false-suggestion refusal and a Pan-American Convention claim.

Read Part 5: Procedure, Evidence & Special Topics →

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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:

• Precedential No. 16 (GABBY'S TABLE), opinion of July 31, 2024
• Precedential No. 14 (SMARTLOCK), opinion of July 1, 2024
• Precedential No. 17 (Blizzard Entertainment and Ava Labs), order of July 18, 2024
• TTAB Reading Room
• The TTABlog: The TTAB Issued 30 Precedential Opinions in 2024
• Trademark Act Section 8 (15 U.S.C. § 1058) and Section 9 (15 U.S.C. § 1059)
• Trademark Manual of Examining Procedure (TMEP), May 2026 edition
• USPTO: Trademark Modernization Act and expungement