Under well-established U.S. law, service marks are only protectable to the extent the services at issue are provided for the benefit of others. This means that, traditionally, retail sales of one’s own products have not necessarily been sufficient to support a service mark registration in International Class 35. But in Blizzard Ent, Inc v Ava Labs, Inc, the TTAB clarified that “[w]hile at one time retail store activities were not considered services, it has long been recognized that gathering various products together, making a place available for purchasers to select goods and providing any other necessary means for consummating purchases constitute the performance of a service.”
Opposer Blizzard Entertainment sought to prevent registration of applicant Ava Labs’ BLIZZARD mark for various business services based on prior registrations for BLIZZARD and BLIZZARD ENTERTAINMENT for online retail store and mail order services. Ava responded with a counterclaim for cancellation based on non-use, arguing Blizzard only ever sold its own products and therefore could not demonstrate it offered retail services for the benefit of others. The Board applied precedent regarding the meaning of ‘service’ under the Lanham Act, ultimately finding that Blizzard’s retail offerings were sufficient.
To qualify as a “service” under the Lanham Act, the activity must be real; must benefit someone other than the applicant; and must be qualitatively different from the sale of goods. In other words, it cannot be simply ancillary to the sale of products. Just because a seller benefits from a particular offering does not necessarily mean that offering cannot qualify as a service, the Board clarified. The relevant question is who primarily benefits from the activity. By providing a central location to purchase goods, Blizzard’s online retail platform primarily benefitted consumers, the Board concluded.
Unfortunately, the opinion does not provide additional clarification on why or how this service “primarily” benefits consumers as opposed to the retail seller, which leaves open the question of whether other types of services commonly performed by goods and services suppliers – such as advertising – might also qualify for trademark protection. However, its holding does offer clear precedent on what qualifies as a “service” under the Trademark Act moving forward.
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