The specimen must show the mark used in a manner that creates in the minds of potential consumers a direct association between the mark and the services. 37 C.F.R. §2.56(b)(2); see generally In re JobDiva, Inc., 843 F.3d 936, 941 (Fed. Cir. 2016) (quoting In re Ancor Holdings, LLC, 79 USPQ2d 1218, 1221 (TTAB 2006)) ("[T]he question is whether the evidence of JobDiva's use of its marks ‘sufficiently creates in the minds of purchasers an association between the mark[s] and [JobDiva's personnel placement and recruitment] services.’"); In re Advert. & Mktg. Dev., Inc., 821 F.2d 614, 620 (Fed. Cir. 1987) ("The ‘direct association’ test does not create an additional or more stringent requirement for registration; it is implicit in the statutory definition of ‘a mark used * * * to identify and distinguish the services of one person * * * from the services of others and to indicate the source of the services.’"); In re Universal Oil Prods. Co., 476 F.2d 653, 655 (C.C.P.A. 1973) ("The minimum requirement is some direct association between the offer of services and the mark sought to be registered therefor."); In re Weiss, Ser. No. 88621608, 2024 TTAB LEXIS 277, at *7 (2024) (quoting In re DSM Pharms., Inc., 2008 TTAB LEXIS 29, at *3 (2008) ("A specimen that shows only the mark with no reference to, or association with, the services does not show service mark usage.")).

Direct association is the minimum the specimen must show, and it may be established textually, contextually, or logically. In re Universal Oil Prods. Co., 476 F.2d at 655, 177 USPQ at 457. What is necessary to establish direct association differs depending on the type of specimen submitted, that is, whether it is a specimen consisting of advertising or a specimen used in the rendering of the services.

Mark Used in Sales or Advertising of Services: For specimens showing the mark used in advertising the identified services, to establish the requisite direct association the specimen must contain a reference to the services and the mark must be used on the specimen to identify the services and their source. In re Weiss, 2024 TTAB LEXIS 277, at *12 (quoting In re WAY Media, Inc., 118 USPQ2d 1697, 1698 (TTAB 2016)); In re Osmotica Holdings Corp., 95 USPQ2d 1666, 1668 (TTAB 2010) (finding that, although the specimens referenced the identified consulting services, the applied-for mark, as used on the specimens, would be perceived by the relevant public as identifying only applicant’s drug technology; the specimens failed to establish the required association between the mark and the identified services). While the services need not be stated word for word, a sufficient reference to the services themselves or a general reference to the trade, industry, or field of use is required. See In re Pitney Bowes, Inc., 125 USPQ2d 1417, 1419-20 (TTAB 2018) (reversing the specimen refusal since the wording "outsourced mailing services" appeared directly below the mark on the webpage advertising and was a sufficient reference to applicant’s mailing, shipping, and delivery services); In re Florists’ Transworld Delivery, Inc., 119 USPQ2d 1056, 1062-63 (TTAB 2016); In re Ralph Mantia Inc., 54 USPQ2d 1284, 1286 (TTAB 2000); see also TMEP §1301.04(h). However, if the alleged reference to the services is so vague that the services cannot be discerned, the specimen will not be acceptable. In re Chengdu AOBI Info. Tech. Co., 111 USPQ2d 2080, 2082 (TTAB 2011) ; see In re Monograms Am., Inc., 51 USPQ2d at 1318. See TMEP §1301.04(i) regarding examples of acceptable service-mark specimens.

Mark Used in Rendering of Services: For specimens showing the mark used in rendering the identified services, the services need not be explicitly referenced to establish the requisite direct association. See In re Metriplex, Inc., 23 USPQ2d 1315, 1316-17 (TTAB 1992) (noting that "the requirements specific to specimens which are advertising are not applicable" and finding the submitted specimens acceptable to show use of applicant’s mark in connection with data transmission services because the specimens showed "the mark as it appears on a computer terminal in the course of applicant's rendering of the service" and noting that "purchasers and users of the service would recognize [applicant’s mark], as it appears on the computer screen specimens, as a mark identifying the data transmission services which are accessed via the computer terminal"). Rather, direct association may be indicated by the context or environment in which the services are rendered, or may be inferred based on the consumer’s general knowledge of how certain services are provided or from the consumer’s prior experience in receiving the services. Id.; see In re WAY Media, Inc., 118 USPQ2d at 1698 . In other words, the context in which the services are provided and consumer knowledge and experience create an inference of the services without an explicit textual reference to the services. See TMEP §1301.04(i), Example 17 (CASHFLOW UNITS).

The applicant may respond to a specimen refusal for failing to show direct association by explaining the nature of the mark’s use or the manner in which the services are advertised or rendered. In re Metriplex, Inc., 23 USPQ2d at 1316 (specimens acceptable based, in part, on applicant’s explanation that the specimens showed the mark as it appeared on a computer terminal in the course of rendering the services). However, an applicant’s response must demonstrate that a consumer would perceive that the applicant is rendering or advertising the identified services. In re Weiss, 2024 TTAB LEXIS 277, at *18-21 (applicant’s explanation that it participated in an "Amazon Associates" program and operated an "Amazon affiliate store" through which applicant provided product recommendation or referral services and not the identified online retail store services did not demonstrate that consumers would perceive applicant as providing online retail store services on applicant’s website rather than referral services). With respect to a particular industry’s typical use of marks in relation to specific services, it may also be helpful for the applicant to provide an explanation regarding industry practice concerning the use of the mark during the rendering of such services and how the applicant’s use comports with such practice. See TMEP §1301.04(i), Example 19 (design of speech bubbles).

The mere fact that the mark is displayed and the services are explicitly referenced or can be inferred from the context of the specimen does not automatically result in direct association between the mark and the services. See In re Johnson Controls, Inc., 33 USPQ2d 1318, 1320 (TTAB 1994). The specimen must associate the mark with the services such that the mark serves as a source identifier for those particular services. See In re WAY Media, Inc., 118 USPQ2d at 1698; cf. In re Sones, 590 F.3d 1282, 1288, 93 USPQ2d 1118, 1123 (Fed. Cir. 2009) ("[T]he test for an acceptable website-based specimen, just as any other specimen, is simply that it must in some way evince that the mark is ‘associated’ with the goods and serves as an indicator of source." (emphasis added)). The requisite direct mark-services association is present when the specimen makes a direct link or connection between the mark and the identified services. See TMEP §1301.04(i), Example 17 (CASHFLOW UNITS) and Example 18 (RIDE 411).

Thus, a specimen is unacceptable if it fails to convey a proper nexus between the mark and the services, or if the services are too attenuated from the proposed mark, either in terms of proximity or logical connection. See, e.g., In re Monograms Am., Inc., 51 USPQ2d at 1319; In re Metriplex, Inc., 23 USPQ2d at 1316. The mere fact that wording from the identification of services appears somewhere on the specimen may not necessarily suffice for the mark-services association or nexus, if there is nothing else to connect that wording to the mark, such as proximity or additional text that establishes the connection.

In assessing whether there is a direct association between the mark and services, the examining attorney should consider the specimen’s content, layout, and overall look and feel, as well as any description of the specimen and industry practice relating to service-mark usage in advertising and rendering the services.