Steal Network, LLC

Trademark Trial and Appeal Board

Dec 6, 2012

No. 77804703 (T.T.A.B. Dec. 6, 2012)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
December 6, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Steal Network, LLC
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Serial No. 77804703
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Gregory M. Hess of Parr Brown Gee & Loveless PC for Steal Network, LLC.

Brian Pino, Trademark Examining Attorney, Law Office 114 (K. Margaret Le,
Managing Attorney).
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Before Bucher, Bergsman, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Steal Network, LLC has applied to register on the Principal Register the
mark STEAL NETWORK in standard character form for the following services, as
amended:
On-line retail store services and mail-order services
featuring apparel, footwear, headwear, eyewear, and
outerwear for adults and children, jewelry, sporting
goods, swimwear, cosmetics, camping and other outdoor
products, baby products, home decor, food, greeting cards,
crafting and scrapbook supplies, fitness products,
backpacks, school supplies, bags, board games, toys,
blankets, pillows, bedding, books, videos, DVDs,
photographs, artwork, safety equipment, sleepwear,
towels, and gifts.
Serial No. 77804703

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After initial examination, the application was published for opposition and
subsequently a notice of allowance issued. Applicant then filed a statement of use,
including specimens of use of the mark, as required by Trademark Act Section 1(d),
15 U.S.C. 1051(d). Upon review thereof, the examining attorney refused
registration under §§ 1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051 and 1127,
on the ground that applicant’s specimen of use did not show the applicant’s mark in
use for the services identified in the application.1 When the refusal was made final,
applicant appealed. We reverse.
Applicant’s specimens of use consisted of reproductions of various internet
web pages, including a page located at the URL www.stealnetwork.com/index.php
(which we will refer to as the “STEAL NETWORK web page”). Applicant’s home
page is displayed below.

1 The examining attorney has expressed his refusal as two separate grounds for refusal:
“[T]he specimens do not show use of STEAL NETWORK in connection with any of the
services specified in the statement of use” vs. “the specimens do not show use of the applied-
for mark in use [sic] in commerce as a service mark for the identified services…”
Examining attorney’s brief at 1. The examining attorney does not address, in his brief or
elsewhere, any failure of the applicant to enter into “commerce,” as defined in the
Trademark Act (15 U.S.C. § 1127), nor does he address any reason why the mark should not
be considered a “service mark,” other than his contention that no connection to the
identified services was shown. We fail to see any distinction between the two grounds and
accordingly we have not addressed them separately.
Serial No. 77804703

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Applicant’s mark is prominently displayed at the top of that page, and the
page features three types of products: sunglasses for babies; a decorating tool; and a
child’s chalk-drawing mat. In each case, a photograph of the product is presented,
along with the product’s price and a moderately detailed description of the product.
Directly above the photograph of each product is a hyperlink “button” marked “Steal
Me!” Applicant contends that by clicking on the “Steal Me!” button customers can
commence the process of ordering and purchasing the displayed goods.2 Other text
on the web page, near the STEAL NETWORK mark, reads as follows:

2 Declaration of Rett Clevenger, ¶ 4, submitted with applicant’s response filed September
30, 2011. Mr. Clevenger is applicant’s chief executive officer.
Serial No. 77804703

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The Steal Network is a collection of deal of the day
websites focused on providing top quality brands and
products to women through the websites BabySteals.com,
ScrapbookSteals.com and KidSteals.com. We pride
ourselves in providing fanatical service, value and
entertainment through our ‘steals’, and lightning fast
fulfillment.
It is apparent on the face of the STEAL NETWORK web page that the goods
depicted thereon are offered for sale. The examining attorney notes, however, that
on the web page, other marks are associated with the offered goods, and that the
purchase process requires the customer to navigate away from the STEAL
NETWORK web page to other web pages that are dominated by other service
marks.3 To be specific, the sunglasses for babies are depicted in a graphic box that
displays the mark BABYSTEALS.COM; and apparently the “Steal Me!” button will
cause the customer to navigate to a web page located at the URL
www.babysteals.com, which prominently displays the mark BABYSTEALS.COM.
The decorating tool is depicted in a graphic box that displays the mark
SCRAPBOOKSTEALS.COM, and the “Steal Me!” button will cause the customer to
navigate to a web page located at the URL www.scrapbooksteals.com, which
prominently displays the mark SCRAPBOOKSTEALS.COM. The child’s chalk-
drawing mat is depicted in a graphic box that displays the mark
KIDSTEALS.COM.4

3 We will refer to the three web pages identified below in this paragraph as the “subsidiary
web pages.”
4 The record does not show an image of the web page to which this particular “Steal Me!”
button will navigate, but for the sake of this discussion we assume that it will navigate to
www.kidsteals.com.
Serial No. 77804703

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With regard to the way in which the STEAL NETWORK web page interacts
with the subsidiary web pages, the examining attorney objects as follows: “STEAL
NETWORK is being used as a marketing website for the other on-line retail store
websites. … The specimens show that STEAL NETWORK is being used in the
promotion of other websites that offer on-line retail store services, not that
applicant is actually using STEAL NETWORK to indicate the source of the on-line
retail store or mail order services.”5 The examining attorney also points to evidence
showing that applicant has referred to itself as follows:
STEAL NETWORK is an interactive marketing company
that delivers top-quality brands and products one day at a
time to their on-line communities through the websites
BabySteals.com, ScrapbookSteals.com, and
Kidsteals.com.6
In response to the examining attorney’s characterization, applicant points out
that it is the owner of the websites located at www.babysteals.com,
www.scrapbooksteals.com, and www.kidsteals.com;7 and that “The STEAL
NETWORK Site has always operated as an electronic ‘storefront’ whereon products
shown on Steal Network’s associated websites are collected and from
which…visitors can order the products…”8
We will first address the examining attorney’s contentions regarding the
nature of the services that applicant actually performs. Notwithstanding the

5 Examining attorney’s brief at 5-6.
6 Applicant’s web page at www.stealnetwork.com/about.php, made of record with the
examining attorney’s final Office action of October 21, 2011.
7 Clevenger Declaration, ¶ 3.
8 Clevenger Declaration, ¶ 4.
Serial No. 77804703

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examining attorney’s arguments, we do not believe the applicant’s characterization
of itself as “an interactive marketing company” or as “a collection of deal of the day
websites” is inconsistent with applicant’s being, in fact, an online retail store
business or a mail order business. The process of bringing goods to market is
commonly referred to as “marketing” such goods. While “marketing” services may,
in some contexts, be understood to mean advertising, public relations, or
commercial consultation services, there is nothing in the record to suggest that
applicant provides any such service. Rather, the record shows that applicant is in
the business of bringing goods to market. The language quoted by the examining
attorney and the text surrounding it make clear that applicant offers to “provid[e]…
products”9 and “deliver[ ] top-quality brands and products….”10 Applicant’s
advertising boasts of a “15,000 square foot headquarters [that] houses both offices
and a fulfillment center focused on sending joy with same-day shipping.”11 The
specimens refer to a warehouse where customers may, at their option, pick up their
purchased goods.12 With this context before us, the examining attorney’s suggestion
that applicant’s offer to provide “lightning fast fulfillment” does not refer to
shipment of goods but is actually an offer to provide speedy “satisfaction” or “to
fulfill the customer’s emotional needs”13 is not well taken.14

9 STEAL NETWORK web page.
10 www.stealnetwork.com/about.php.
11 Id.
12 See also Applicant’s reply brief, at 2: “Applicant gathers products physically at its STEAL
NETWORK warehouse….”
13 Examining attorney’s brief at 8.
Serial No. 77804703

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The examining attorney has presented, by way of example, information
regarding a web-based service called DEALNEWS,15 and urges the Board to find
that applicant performs a similar service.
At the DEALNEWS website, DEALNEWS lists the goods
and/or services of others… and the customer clicks on a
link at the DEALNEWS website that ultimately takes the
customer to the online retailer that actually performs the
on-line retail store services. Thus, the DEALNEWS
website does not offer on-line retail store services, but
only promotes the goods and/or services of others.16
The evidence indicates that applicant’s service is substantially different from
that of DEALNEWS. Applicant directs customers not to the retail services of
others, but to its own retail services. Unlike DEALNEWS, applicant controls the
subsidiary websites at issue and controls the retail store services provided there.
The retail store services promoted on the STEAL NETWORK web page are
applicant’s own services, and this promotional activity in no way affects the nature
of the services provided by applicant. (All merchants promote their own goods and
services.) To be clear, it does not matter that the goods offered on applicant’s
website may be the goods of others, because offering the goods of others is a
conventional function of a retail store. The evidence shows that applicant is,
indeed, in the business of online retail stores. We accept the applicant’s suggestion
that its services are analogous to those of a department store that operates under a
primary service mark for the store as a whole, but includes specialized departments

14 See also applicant’s offer of “lightening-fast [sic] shipping” at
www.stealnetwork.com/about.php.
15 Submitted with the examining attorney’s final Office action of October 21, 2011.
16 Examining attorney’s brief at 6-7.
Serial No. 77804703

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that offer particular classes of goods under subsidiary service marks (e.g., baby
goods at Babysteals.com, craft supplies at Scrapbooksteals.com, etc.).17
We turn now to the question of whether applicant successfully associates its
mark with online retail store services. The examining attorney contends, in
essence, that the presence of other trademarks such as BABYSTEALS.COM and
SCRAPBOOKSTEALS.COM on the STEAL NETWORK web page interferes with
the association between applicant’s mark and the retail services provided. More
importantly, he explains that “no actual on-line retail transaction takes place under
the proposed STEAL NETWORK mark. … or at the STEAL NETWORK website as
would traditionally be expected from an on-line retail store.”18 To illustrate this
contention, he points to the specimen page showing that payment for a purchase
through the SCRAPBOOKSTEALS.COM website is accomplished on a “Google
Checkout” web page. The examining attorney’s focus on the transaction of payment
for the goods is too narrow. Payment is not the only element of a retail store
service, and it is not likely the most essential. Applicant points to TMEP
§ 1301.01(a)(i) for a definition of retail store services:
… gathering various products together, making a place
available for purchasers to select goods, and providing
any other necessary means for consummating
purchases….19
This informal definition occurs within a discussion of the meaning of “service” in the
abstract. However, it sets forth with reasonable accuracy the generally accepted

17 Applicant’s brief at 7.
18 Examining attorney’s brief at 7.
19 Trademark Manual of Examining Procedure § 1301.01(a)(i) (October 2012).
Serial No. 77804703

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understanding of what a retail store does and why those activities constitute a
“service” (an issue that, for some time and in some places, was a matter of dispute).
It is clear from the evidence that the “retail store” functions described in the TMEP
are performed through applicant’s various websites, in the aggregate. We accept
applicant’s contention that many of them are performed through the STEAL
NETWORK web page itself: goods are “gathered” on that page, in that they are
named, pictured, described, and priced on the web page (and this virtual gathering
is backed up by the physical gathering of the goods in applicant’s warehouse); the
STEAL NETWORK web page provides a context (a virtual “place”) in which
customers may consider and select the goods; and it provides a means for at least
initiating the consummation of the purchase, in the form of the virtual “buttons”
marked “Steal Me!” The prominent presence of the applicant’s mark on the web
page that provides these functions creates an association between the mark and
these services.
The association between the mark and the services is not absolutely perfect
because, as the examining attorney notes, some elements of the services require the
customer to navigate to other websites (the subsidiary web pages) that are
dominated by other marks. It is significant, however, that the subsidiary web pages
are controlled by applicant, and the other marks are applicant’s own marks. Most
importantly, the applicant’s mark STEAL NETWORK is displayed even on the
subsidiary web pages: it appears on the “tab” at the upper left-hand corner of the
Serial No. 77804703

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page. Applicant’s mark is, thus, associated with the services that applicant
provides via the subsidiary web pages.
Applicant is not to be faulted for the proliferation of marks on its web pages
because, as applicant notes,20 it is a widespread practice for businesses to associate
more than one mark with their goods and services. Although the examining
attorney believes that on a better web page “there would be no need for the other
website addresses listed on the STEAL NETWORK website specimen, as the
products would simply be listed on the same website specimen without any mention
of the other websites,”21 applicant is entitled to disagree and to conduct its business
as it sees fit.
We find that the applicant’s specimens of use sufficiently demonstrate use of
applicant’s mark in connection with online retail store services to the extent
required under applicable law and rules.

Decision: The refusal to register on the ground that applicant’s statement of
use failed to demonstrate use of applicant’s mark in connection with any of the
services identified in the application is reversed. The mark will be forwarded for
registration in due course.

20 Applicant’s reply brief at 9.
21 Examining attorney’s brief at 10.