A trademark must be used in connection with the services identified in a trademark application “in a manner that would be perceived by potential purchasers as identifying the applicant's services and indicating their source.” In re DSM Pharms., Inc., No. 78373640, 2008 TTAB LEXIS 29, at *2 (TTAB 2008); see also In re JobDiva, Inc., 843 F.3d 936, 941 (Fed. Cir. 2016) (“To determine whether a mark is used in connection with the services described in the registration, a key consideration is the perception of the user.”). “[T]here must be something which creates in the mind of the purchaser an association between the mark and the service activity.” In re Weiss, No. 88621608, 2024 TTAB LEXIS 277, at *12-13 (TTAB 2024) (quoting In re Cardio Grp., LLC, No. 786840860, 2019 TTAB LEXIS 153, at *3 (TTAB 2019)). 

Publishing and publication of books are accepted descriptions of services under Class 41 (which includes the presentation of works of literature to the public for cultural or educational purposes). The USPTO notes for these descriptions refer to the service of publishing the printed matter of others. 

The TTAB recently considered what the service of “publishing” entails in connection with the applied-for I LOVE YOU THIS MUCH mark. In re Lostmy.name Ltd, Ser. No. 98342035 (TTAB Feb. 17, 2026). 

Considering a definition of “publishing” as “the business or profession of the commercial production and issuance of literature, information, musical scores or sometimes records or art”; the TTAB defined “issuance” as “the act of issuing . . .”  where “issuing” in this context means “to send out for sale or circulation.” 

The TTAB concluded that the applicant instead offered customized printings of a pre-published template book to the order and specification of an individual customer where “the customer becomes the author of the book” and the specific book ordered is not available to anyone but the consumer who ordered it. “The production of the book is not professional, but personal: the book is not produced to be sold to others but because it was sold to one consumer who designed its content within a template.” 

Starting with this premise, Applicant's argument requires us to believe that the act of Applicant/publisher sending the customized book back to the author/consumer constitutes the act of publishing. However, this is inconsistent with the definitions of “issuing,” i.e., to send out for circulation, meaning to others, not back to the author. This argument is also inconsistent with other definitions of the term “publish,” meaning, for example, “to disseminate to the public,” i.e., not back to the author. Evidence of record also shows that modern publishing practice involves marketing a book to the public. Simply put, ordering a customized storybook for oneself, which Applicant merely prints and ships to the consumer (as denoted in its ordering details and discussed above), does not constitute “publishing” or “publication” services.

Thus, the TTAB affirmed a refusal to register because the specimen failed to show a direct association between the applied-for I LOVE YOU THIS MUCH mark and the identified services, namely, “publication of books; publication of personalized story books; book publishing,” as required by Trademark Rule 2.56(b)(2). 

Of note: “Printing of books” is an acceptable description of services under Class 40.