On-line Sales Alert -- An Amazon Affiliate Store is Not a Retail Store Service
The Trademark Trial and Appeal Board (TTAB) has issued a precedential opinion that an Amazon Affiliate Store is a “referral service,” not a “retail store service” for purposes of a service mark application.
Gail Weiss (Applicant) applied to register the service mark GABBY’S TABLE for “computerized on-line retail store services.” She converted her intent to use application to a use-based application by submitting a Statement of Use accompanied by specimen webpages, one of which is shown below.
Applicant’s Referral Webpage
The Examining Attorney refused registration on the ground that the specimen failed to show the mark in use in connection with the identified retail store services. Applicant appealed to the TTAB, which affirmed the refusal to register, characterizing the specimen as “website marketing and advertising.”
The TTAB adopted the Examining Attorney’s argument:
Specifically, the specimen shows a list of items recommended for purchase, but the website does not offer the consumer retail store services in order to purchase the goods. As shown by the evidence of record, clicking on the “Buy now” button shown near the goods redirects consumers to third-party websites, such as those of Amazon [and others], which offer retail store services to consumers.
An illustrative example submitted by the Examining Attorney was a screenshot of the Amazon webpage shown below. It shows pricing, shipping information and a shopping cart for the purchase of the item.
Amazon’s Retail Store Webpage
Applicant was part of the Amazon Affiliate Store program which pays a commission each time someone clicks on an Amazon Associate’s website and completes the purchase on Amazon.com as a result of the referral.
The TTAB pointed out that Applicant does not herself sell the products she recommends and does not display, for instance, a virtual “shopping cart,” pricing, shipping information, or any other indicia of online retail store services. It rejected Applicant’s argument that it provided services in the form of “shelf space” for the goods of others. The TTAB contrasted this to online consignment services whereby goods are received on consignment and sold in online retail stores.
The TTAB said that merely calling Applicant’s services an “affiliate store” does not change her referral services into online retail store services, which are provided by the third parties to which the customer is referred.
In re Gail Weiss, Application No. 88621608 (T.T.A.B. July 31, 2024).
Author’s Note:
This problem is easily remedied. Your description of services in a service mark application should conform to the services you actually are or will be rendering as shown by the specimen of use. In this case, the Applicant could just file a new application listing “computerized on-line retail store referral services.”
For further information, please contact Meichelle R. MacGregor or your CLL attorney.
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Meichelle practices in the IP and litigation fields and counsels clients on a wide range of intellectual property including trademarks, trade dress, licensing, copyrights, domain names and e-commerce. She also handles commercial and corporate disputes.