It is well-established that retail store services cover the sale of goods produced by others. For retail store activities, 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. See In re Supply Guys, Inc., Ser. No. 77027094, 2008 TTAB LEXIS 12, at *24-25 (TTAB 2008) (“Starting in about 1958, the Patent and Trademark Office began granting service mark registrations to retailers of merchandise for services such as ‘retail grocery store services,' ‘retail department store services,' and the like.”) (quoting J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 16:47 (2007)). 

The TTAB has now affirmatively held that retail store activities featuring only a party's own goods are “services” under trademark law. Blizzard Entertainment, Inc. v. Ava Labs, Inc., Opposition No. 91285851 (TTAB July 18, 2024). 

The opposition included a counterclaim concerning Registration Nos. 35323484 and 35385165 on the Principal Register for, respectively, the standard character marks BLIZZARD and BLIZZARD ENTERTAINMENT, each for use in connection with “Electronic commerce services, namely, providing online retail store and mail order services, all featuring clothing, books, mouse pads, toys, games” in Class 35. For purposes of a motion for judgment on the pleadings against the counterclaim, Blizzard conceded that its services feature the sale of “only its own branded goods.” 

To determine what constitutes a service, the following criteria are evaluated: (1) a service must be a real activity; (2) a service must be performed to the order of, or for the benefit of, someone other than the applicant; and (3) the activity performed must be qualitatively different from anything necessarily done in connection with the sale of the applicant's goods or the performance of another service. In re Canadian Pac., Ltd., 754 F.2d 992, 994 (Fed. Cir. 1985); see also In re Husqvarna AB, Ser. No. 78899587, 2009 TTAB LEXIS 492, at *4-5 n.3 (TTAB 2009); Carefirst of Md., Inc. v. FirstHealth of the Carolinas, Inc., Opp. No. 91116355, 2005 TTAB LEXIS 600, at *33 (TTAB 2005); see also In re Venture Lending Assocs., Ser. No. 73402929, 1985 TTAB LEXIS 89, at *4-6 (TTAB 1985) (funds investment and providing capital for management is an activity that primarily benefits others even if applicant also derives some benefit from the performance thereof). 

In Blizzard Entertainment, the focus was on whether the identified retail store and mail order activities are “to the order of, or for the benefit of, someone other than the applicant” and are “qualitatively different from anything necessarily done in connection with the sale of the applicant's goods.”

          With respect to the second criterion, the controlling question is who primarily benefits from the activity. If the activity is done primarily for the benefit of others, the fact that Blizzard also derives a benefit is not fatal. See In re Venture Lending Assocs., Ser. No. 73402929, 1985 TTAB LEXIS 89, at *4-6 (TTAB 1985) (funds investment and providing capital for management is an activity that primarily benefits others even if applicant also derives some benefit from the performance thereof). On the other hand, if the activity primarily benefits the Blizzard, it is not a registrable service even if others derive some benefit. In re Dr. Pepper Co., 836 F.2d 508, 510 (Fed. Cir. 1987) (contest promoting applicant's goods not a service, even though benefits accrue to winners of contest); City Nat'l Bank v. OPGI Mgmt. GP Inc./Gestion OPGI Inc., Can. No. 92050730, 2013 TTAB LEXIS 189, at *26-32 (TTAB 2013) (finding that intranet website was used solely for internal purposes). In other words, when Blizzard is performing an activity primarily for its own benefit, we do not consider that activity to be a registrable service.
          With respect to the third criterion, “[t]he fact that an activity is ancillary to a principal service or to the sale of goods does not in itself mean that it is not a separately registrable service.” Carefirst of Md., 2005 TTAB LEXIS 600, at *33 (citing In re Universal Press Syndicate, Ser. No. 73447294, 1986 TTAB LEXIS 128 (TTAB 1986) (licensing cartoon character found to be a separate service that was not necessary to larger business of providing a magazine and newspaper cartoon strip)). See also In re John Breuner Co., Ser. No. 72064607, 1963 TTAB LEXIS 1 (TTAB 1963) (credit services provided by a retail store constitute a separate service, since extension of credit is neither mandatory nor required in the operation of a retail establishment). That Blizzard's primary commercial activity may be the manufacturing and sale of various goods bearing its marks does not mean that the online retail store and mail order activities featuring its own goods are not separate services. See Carefirst of Md., 2005 TTAB LEXIS 600, at *33-34 (“Further, the fact that the activities are offered only to purchasers of the trademark owner's primary product or service does not necessarily mean that the activity is not a service.”)

Noting that the Nice Classification includes an explanatory note identifying "enabling customers to conveniently view and purchase those goods" as a "benefit of others," see International Classification of Goods and Services for the Purposes of the Registration of Marks, 12th Edition (2024), the TTAB held that "such online retail store and mail order activities featuring one's own goods primarily benefit consumers in that the activity provides a central location to find, examine, and purchase various goods; and this is true even though the retailer derives the benefit of selling its own goods." 

Neither the Trademark Act nor authorities interpreting the Act distinguish between retail stores that sell products under the same brand name as the store and those that sell goods produced by and bearing the brands of others. See Supply Guys, 2008 TTAB LEXIS 12, at *26 (“Retail stores can sell products under their own brand name that is the same as the store's name or they can sell goods produced by others.”). Furthermore, the Board has implicitly recognized that retail store activities featuring one's own goods are services, acknowledging that “if a retail store also uses the name of the store on the goods themselves, the same mark can serve both a trademark and service mark function.” Id. (citing Giant Food Inc. v. Rosso and Mastracco, Inc., Opp. No. 91060949, 1982 TTAB LEXIS 10, at *7-8 (TTAB 1982)).

Accordingly, the TTAB granted partial judgment on the pleadings and dismissed the counterclaim for cancellation of Blizzard's registrations. 

The TTABlog commented that "[t]he line between what primarily benefits an entity and what doesn't primarily benefit an entity remains a bit murky."