The Board affirmed a refusal to register the mark SAVE IT YOUR WAY for “creating an on-line community for registered users …,” finding that Applicant FTD failed to show use of the mark with the recited service. The Board ruled that FTD’s Twitter page did not offer this social-networking service as a separable service to others, but rather as merely incidental to the sale of its goods. In re Florists’ Transworld Delivery, Inc., Serial No. 85164876 (May 11, 2016) [precedential].
FTD sought to register its mark for “Creating an on-line community for registered users to participate in discussions, get feedback from their peers, form communities, and engage in social networking featuring information on flowers, floral products and gifts.” (Class 42). The specimens of use comprised its Twitter “profile” page along with several related Internet webpages. The question was whether FTD or Twitter was providing the services of “creating an on-line community.”
The Board pointed to a recent revision to the TMEP that cautioned examining attorneys to carefully examine webpages from social-networking websites to make sure that the mark in question is being used with the recited services:
Some applicants may mistakenly mischaracterize their services as ‘social networking’ because they assume that advertising or promoting their non-social-networking services via a social-networking website means they are providing social-networking services. For instance, an applicant may mistakenly file an application for ‘online social-networking services’ and provide a Facebook® webpage as a specimen when, in fact, they operate a pet store and are only using the Facebook® website to advertise the pet store and communicate information to and messages with actual and potential customers. Such a specimen is not acceptable for the social networking services since it does not demonstrate that the applicant is providing these services. TMEP Section 1301.04(h)(iv)C).
FTD argued that it had created its own virtual sub-community within Twitter, but the Board was unmoved. “Applicant has done nothing more than use the Twitter online community forum to engage in social-networking for its own benefit, and to advertise its online retail store services, which are rendered over its own corporate website ….” Moreover, to the extent that FTD provides information regarding flowers or conducts events to promote the sale of flowers, those activities do not appear appear to constitute a separate “registrable service,” but are merely incidental too its primary services.
Therefore, the Board affirmed the refusal to register under Sections 1 and 45 of the Trademark Act.