New Ruling Expands Trademark Owners' Rights In Retail Space

Trademark lawyers are often asked: "What's the difference between a trademark and a service mark?" In general, a trademark refers to a brand name used in connection with goods, while a service mark is one that is used in connection with the provision of services. The services must be provided for the benefit of someone other than the mark owner. But the Trademark Trial and Appeal Board ("TTAB") ruled in a recent precedential decision that operating an online retail store under a particular brand name can qualify as use of a service mark, even where the owner only sells its own branded products via the online store. What separately registrable service(s) is the seller providing merely by selling its own products on its website? The TTAB's decision seeks to answer that question.