TTAB’s Landmark Decision Expands Service Mark Protection for Online Retailers

In a landmark decision, the Trademark Trial and Appeal Board (TTAB) has expanded the understanding of what constitutes a “service” under U.S. trademark law. In the case of Blizzard Entertainment, Inc. v. Ava Labs, Inc., the TTAB ruled that operating an online retail store exclusively selling one’s own branded products qualifies as a registrable service mark use.

Case Background

Blizzard Entertainment, known for its popular video games, opposed Ava Labs’ application to register the mark BLIZZARD for various business services. Blizzard argued a likelihood of confusion with its existing BLIZZARD and BLIZZARD ENTERTAINMENT marks, which were registered for online retail stores and mail-order services. Ava Labs counterclaimed, seeking cancellation of Blizzard’s registrations on the grounds of nonuse, asserting that Blizzard’s sale of its own products did not constitute a service to others.

TTAB’s Analysis and Decision

The TTAB examined whether Blizzard’s operation of an e-commerce website selling only its own products could be considered a service under the Lanham Act. Traditionally, for an activity to qualify as a service mark use, it must be:

1. A Real Activity: The activity must be genuine, not incidental.
2. Primarily for the Benefit of Others: The activity should chiefly benefit parties other than the service provider.
3. Qualitatively Different: The service must be distinct from actions necessarily done in connection with the sale of one’s own goods.

In its decision, the TTAB concluded that Blizzard’s online retail operations, even though exclusively featuring its own products, primarily benefit consumers by providing a centralized platform to find, examine, and purchase various goods. This consumer benefit satisfies the criteria for a registrable service mark.

Implications for Trademark Owners

This ruling signifies a shift in the interpretation of service marks, acknowledging that:

• Expanded Protection: Brand owners can now seek service mark registration for online retail services, even if they sell only their own branded products.
• Strategic Registrations: Businesses should consider registering their brand names as trademarks for their goods and as service marks for their retail services.
• Enhanced Enforcement: Having both trademark and service mark registrations can strengthen a brand’s position in enforcement actions against potential infringers.

For instance, a company manufacturing and selling “XYZ” branded apparel through its own website might benefit from registering “XYZ” as a service mark for “online retail store services featuring clothing.” This dual protection can offer broader legal grounds in disputes and may deter potential infringers.

Conclusion

The TTAB’s decision in Blizzard Entertainment, Inc. v. Ava Labs, Inc. underscores the evolving nature of trademark law in the digital age. Brand owners should reassess their trademark portfolios to ensure they are leveraging all available protections, including service mark registrations for their retail operations. Consulting with experienced trademark counsel can provide guidance tailored to specific business models and help navigate this nuanced area of law.

For more detailed information, refer to the TTAB’s decision in Blizzard Entertainment, Inc. v. Ava Labs, Inc., 2024 USPQ2d 1299 (TTAB 2024).