Caution: Trademark and Social Media

Often, trademark owners seek to register their marks for “social networking” or “creating an online community for users.”  That’s fine, if the trademark owner is actually providing the social networking service, or the actual online community. But if the trademark owner is just using an existing social networking service to engage customers: not OK.

A recent decision from the Trademark Trial and Appeal Board offers a word of caution.

Florists’ Transworld Delivery, Inc. (FTD) tried to register SAY IT YOUR WAY 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.

As its specimen of use, though, FTD just submitted its Twitter profile page. The application failed, because FTD was not providing an on-line community. FTD was using an on-line community (Twitter) to promote its business in the floral industry.

Reasonable minds could differ. The TTAB’s decision, though, finds support in the Trademark Manual of Examining Procedure (TMEP):

Webpages from social-networking websites should be scrutinized to ensure that the mark is properly associated with the identified 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 1301.04(h)(iv)(C)