DuetsBlog Collaborations in Creativity & the Law

Be a Service “to Others”

Posted in Almost Advice, Idea Protection, Trademarks, TTAB, USPTO

It’s rare that we focus on descriptions of goods or services here, but one of the most common reasons that a trademark for a brewery or winery is refused registration at the Trademark Office comes down to the description of services.  “Brewery services” and “winery services” are popular descriptions often used by new entities or producers who are in the planning stages.   The Trademark Office generally will only question the services once a specimen has been provided that does not clearly link the mark to brewing or making wine for others, rather than just for its own beer or wine.  The “brewery services” description was actually deleted from the Trademark Office’s Acceptable ID Manual in 2013, and replaced with “beer making and brewing services [for others]” as an acceptable description.  Certainly there are contract brewers and custom crush production facilities that make beer or wine for other breweries.  From what I heard at the Craft Brewers Conference earlier this month, we may begin seeing a trend towards consolidated production facilities.

When this refusal is made, the applicant who’s only making beer and wine for their own labels often finds themselves in a Catch-22:  they may be stuck with the services shown on the submitted specimen or at least what was available as of the filing date of the specimen.  Clever and creative amendments to the description of services can help salvage such applications from the perils of these requirements.

To determine what constitutes a “service,” the Trademark Office has established the following criteria:

(1) it must be a real activity;

(2) it must be performed to the order of, or for the benefit of, someone other than the applicant; and

(3) it must be qualitatively different from anything necessarily done in connection with the sale of the applicant’s goods or the performance of another service.

Another “service” often mentioned in applications of late involves a claim for “social networking services” where the applicant has provided a screenshot of their Facebook(R) page or a Twitter(R) feed to show use.   In a recent TTAB decision involving the florist FTD, the Board determined that merely using a social networking page as advertising for its own benefit and therefore does not amount to providing “social networking” services for others.   In a significant update to the Trademark Manual of Examining Procedure in April 2016, the Trademark Office added at TMEP 1301.04(h)(iv)(C):

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.

Value is most often found in the performance of services for the benefit of another, and that’s true for trademarks, too.