The Briefing: Affiliate Marketing vs Retail Services – TTAB’s Landmark Ruling

'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.