Party's Twitter Activity Not Use in Commerce for Social Media Services: TTAB | Practical Law

Party's Twitter Activity Not Use in Commerce for Social Media Services: TTAB | Practical Law

In In re Florists' Transworld Delivery, Inc., the Trademark Trial and Appeal Board (TTAB) ruled that using a trademark on Twitter was not evidence of use in commerce in connection with "creating an online community."

Party's Twitter Activity Not Use in Commerce for Social Media Services: TTAB

Practical Law Legal Update w-002-4262 (Approx. 3 pages)

Party's Twitter Activity Not Use in Commerce for Social Media Services: TTAB

by Practical Law Intellectual Property & Technology
Published on 16 May 2016 • USA (National/Federal)
In In re Florists' Transworld Delivery, Inc., the Trademark Trial and Appeal Board (TTAB) ruled that using a trademark on Twitter was not evidence of use in commerce in connection with "creating an online community."
On May 11, 2016, in In re Florists' Transworld Delivery, Inc., the Trademark Trial and Appeal Board (TTAB) ruled that using a trademark on Twitter was insufficient to support use in commerce in connection with "creating an online community" (Serial No. 85164876 (T.T.A.B. 2016)).
Florists' Transworld Delivery, Inc. (FTD) filed an intent to use application to register the mark SAY IT YOUR WAY as a trademark in connection with creating an online community for registered users, in International Class 42.
When it filed its statement of use, FTD submitted a screenshot of its Twitter profile page as a specimen evidencing use of the mark in commerce. The examiner refused registration on the ground that the screenshot failed to show use of the mark in connection with the services identified in the application.
In response, FTD substituted seven pages of screenshots showing conversations between the company and its fans and customers on Twitter. The examiner maintained the refusal and FTD appealed to the TTAB.
The TTAB agreed with the examiner, ruling that the Twitter print-outs did not:
  • Advertise or offer for sale the service of creating an online community.
  • Show that FTD was rendering online community creation services under the mark.
The TTAB cited section 1301.04(h)(iv)(C) of the Trademark Manual of Examining Procedure (TMEP), which warns examining attorneys to carefully scrutinize social media webpages submitted as specimens of use, and concluded that:
  • Twitter, not FTD, created the online community at issue.
  • FTD was merely using Twitter to promote its retail services.
  • FTD had not created a "sub-community" on Twitter that would justify registration in the online community creation class.
Therefore, the TTAB affirmed the examiner's refusal to register FTD's mark for online community creation services, though the application could proceed to publication in connection with other applied-for services.