Distinguishing Affiliate Marketing from Retail Services

‘Gabby’s Table’ was denied registration in a major Trademark decision that impacts affiliate marketing. Weintraub attorneys Scott Hervey and Jamie Lincenberg break down what this means for your business in this episode of “The Briefing”

Watch this episode on the Weintraub YouTube channel here and listen to the full podcast here.

Show Notes:

Scott

On July 1st, 2024, the US Trademark Trial and Appeal Board issued a precedential decision that has great implications in today’s world of affiliate marketing. In the decision of In re Gayle Weiss, the T-Tab upheld an examiner’s refusal to register the mark Gabby’s Table for computerized online retail store services in the field of cooking utensils, cookware, etc. Because the specimen submitted by the applicant, the Gabby’s Table website, failed to show the mark used in commerce in connection with the identified services. I’m Scott Hervey from Weintraub Tobin, and today I’m joined by Jamie Lincenberg. Today, we’re going to break down this decision and its implications for affiliate marketing on today’s episode of “The Briefing.”

Jamie, welcome back. It’s been a while.

Jamie

Thanks, Scott. Yeah, it’s nice to join you again.

Scott

Always great to have you, Jamie. But let’s dive into this presidential decision by the Trademark Trial and Appeal Board. As I said in the opening, the TTAB case results from an applicant’s appeal from a trademark examiner’s refusal to register the Gabby’s table, Trademark for online retail store services. I think the main point of this decision is to clarify the boundaries of what can and cannot be considered retail store services, especially in the digital age where online businesses blur traditional lines. This decision also shows the critical issue of providing acceptable specimens of use during the trademark registration process.

Jamie

Before we get into that, can I point out a procedural issue highlighted by the TTAB that is an important thing to highlight here?

Scott

Yeah, absolutely. Go for it.

Jamie

Before the board got to the core of the appeal, the board addressed the applicant’s request that the board take judicial notice of certain third-party registrations and follow a hyperlink for information regarding Amazon affiliates. The board denied both of those requests. They emphasize that evidence must be submitted properly through a request to suspend the appeal and remand the application for further examination. This aligns with established procedures which require a formal process to introduce new evidence after an appeal has been filed.

Scott

Yeah, Jamie, that’s great. That’s a really important procedural point to make because it seems to be something that comes up frequently in TTAB disputes. So, practitioners who are appealing an examiner’s refusal to register and want to introduce new evidence, evidence that was not introduced during the office action, and response to office action procedures, you need to suspend the TTAB proceeding or mandatory examining attorney and introduce new evidence on the record that way. Now, let’s get to the point of the case. Digging into the heart of the decision, the specimen abuse. For those unfamiliar with what a specimen is, it’s essentially a sample that shows how a trademark is actually being used in commerce. The specimen needs to create a direct association between the mark and the services it represents.

Jamie

In this case, the applicant specimen was a web page featuring products recommended by the applicant with a “Buy Now” button. The problem was that clicking this button didn’t lead to a purchase directly from the applicant; instead, it redirected users to third-party websites like Amazon, where the products could then be bought.

Scott

Right. And the TTAB found that this did not constitute an acceptable specimen because it didn’t show the applicant providing the retail services directly. Instead, it only showed the applicant engaged in affiliate marketing. Affiliate marketing typically involves promoting third-party products or services through various online platforms. When someone makes a purchase via an affiliate’s link, the affiliate usually earns a commission. It’s a business model that’s become increasingly popular with the rise of influencers, bloggers, and online content creators.

Jamie

The TTAB made it clear that affiliate marketing doesn’t equate to operating a retail store. The distinction there lies in the nature of the services provided. Retail services, according to the TTAB, involve the direct sale of goods or services to consumers. This includes everything from brick-and-mortar stores to e-commerce websites that handle transactions directly with the customers. On the other hand, affiliate marketing doesn’t involve direct sales or transactions. Instead, affiliates merely direct potential buyers to a retailer’s platform, where the actual purchase then takes place. The affiliate is acting more as a middleman connecting consumers with products but not handling the sale itself.

Scott

And the board pointed out that an acceptable specimen for a service market must show a direct connection between the market and the services. In this case, simply listing products with an affiliate link did not meet that standard for a retail store. If the services are as retail store services, then the specimen must show that consumers are able to purchase the goods from the applicant and not some other third party.

Jamie

What are the big takeaways from this decision? I think, first, it underscores the importance of submitting a specimen that clearly demonstrates the use of the mark in connection with the specific services listed in the application.

Scott

Right. That’s a great point. Second, I think it highlights the strict procedural rules around introducing evidence in trademarked appeals, attempting to add evidence via hyperlinks or during the appeals process without following the correct steps simply won’t fly.

Jamie

Yeah. And lastly, but I think probably the most important point is the precedent set that the USPTO will now require retail services to have that direct transactional relationship with consumers. And specimen submitted in support of an application to register a mark for retail services must be able to show this direct transactional connection.

Scott

Yeah, and on a broad level, I think this case is also a reminder to carefully consider how you categorize your business activities when you are applying for a trademark. Misclassifying your services could lead to legal challenges or, in this case, a rejection from the trademark trial and appeal for it.

Jamie

Right. Thanks, Scott. I think this is really helpful and important information to share.

Scott

Yeah, I must agree, Jamie. Well, that’s all for today’s episode of “The Briefing.” Jamie, thanks for joining us today. And thank you, the listener or viewer, for tuning in. We found this episode informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this episode with and colleagues. And if you have any questions about the topics we cover today, please leave us a comment.