98353578•American Aging Association, Inc.
Testo completo
This opinion is not a precedent of the TTAB Mailed: August 26, 2026 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re American Aging Association, Inc. _____ Serial No. 98353578 _____ Duncan Palmatier, of Law Office of Duncan Palmatier, for American Aging Association, Inc. Ashton Copeland, Trademark Examining Attorney, Law Office 111, Chris Doninger, Managing Attorney. _____ Before Goodman, Casagrande, and Brock, Administrative Trademark Judges. Opinion by Casagrande, Administrative Trademark Judge: This appeal concerns a refusal to register on the ground that the specimens do not show use of the mark on or in connection with the services identified in the amended application. We reverse. BACKGROUND To understand the issue this appeal presents, it is helpful to lay out the pertinent aspects of the prosecution history. Applicant American Aging Association, Inc., applied to register the mark GEROSCIENCE (in standard characters) for services
Serial No. 98353578 - 2 - originally identified as “Publication of journals, research articles, and scholarly essays in the field of the science of aging,” in International Class 41.1 As part of its application, Applicant submitted the cover of one issue of a journal entitled GEROSCIENCE as a specimen of use. The Examining Attorney issued a Nonfinal Office Action refusing registration, resting the refusal in part on the ground that the specimen did not show use of the mark for the identified services under Trademark Act §§ 1 & 45, 15 U.S.C. §§ 1051 & 1127,2 saying: “Publication” refers to the service of publishing the periodicals or printed matter of others. The publication of one’s own periodical or printed matter is not a service because it is done primarily for applicant’s own benefit and not for the benefit of others (rather, it would be considered goods in Class 16, like newspapers, magazines, or books).3 In response to the specimen refusal, Applicant did two things. It amended the services by limiting them to “online” publication: “providing online publication of 1 Applicant filed Application No. 98353578 on January 11, 2024, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based on Applicant’s claim of first use anywhere at least as early as September 15, 2016, and first use in commerce of March 19, 2017. 2 We observe that the refusal should also have listed Section 3 of the Act, 15 U.S.C. § 1053, because the application identifies only services, not goods. Section 3 makes the provisions of Section 1, whose terms concern goods, applicable to services. This observation does not affect our analysis of the merits of the appeal. 3 See Aug. 13, 2024, Nonfinal Office Action, at TSDR 3-4. Citations to the application record refer to the version of the documents as downloaded in .pdf format from the USPTO’s Trademark Status and Document Retrieval (TSDR) database. This Nonfinal Office Action also included a “Merely Descriptive Refusal” under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1). Applicant’s response claimed ownership of Registration No. 5243186, which issued on July 11, 2017, on the Supplemental Register for the mark GEROSCIENCE for the same services identified in the current application. See February 13, 2025, Response to Nonfinal Office Action, at TSDR 3. Applicant also asserted a claim of acquired distinctiveness under Section 2(f) of the Act, 15 U.S.C. § 1052(f), see id. at TSDR 3-4, which the Examining Attorney later accepted, resolving the Section 2(e)(1) refusal.
Serial No. 98353578 - 3 - journals, research articles, and scholarly essays in the field of the science of aging.”4 Applicant also submitted a substitute specimen which Applicant described as “webpage of GeroScience June 2023 Volume 45, Issue 3, cover, and list of articles.”5 The first two pages of the screenshots are depicted below:6 4 See Feb. 13, 2025, Response to Nonfinal Office Action, at TSDR 3. 5 Id. at 34-44. 6 Applicant’s brief does not argue that the original specimen is sufficient as to the amended services, so we need not depict or discuss it.
Serial No. 98353578 - 4 -
Serial No. 98353578 - 5 -
Serial No. 98353578 - 6 - The Examining Attorney issued a Final Office Action that acknowledged Applicant’s amendment to the identification of services but nevertheless made the specimen refusal final.7 Applicant appealed8 and requested reconsideration.9 We suspended the appeal, remanding to the Examining Attorney to consider the request for reconsideration.10 Applicant’s reconsideration request attached a “corrected substitute specimen” consisting of “a photograph of the [same webpage submitted as a substitute specimen in the February 13, 2025, Response to Nonfinal Office Action] on a computer screen, as seen by a viewer.”11 This photograph is depicted below: 7 See May 23, 2025, Final Office Action, at TSDR 2. 8 See 1 TTABVUE. References to the briefs and appeal record cite to the Board’s TTABVUE electronic docket system. The number preceding “TTABVUE” represents the docket number in TTABVUE and any number following “TTABVUE” is the specifically-cited page(s), if any. 9 See Nov. 19, 2025, Reconsideration Request. 10 See 2 TTABVUE. 11 See Nov. 19, 2025, Reconsideration Request, at TSDR 7 (description); id. at 9 (specimen).
Serial No. 98353578
- 7 -
The Examining Attorney denied reconsideration, stating:
It is not in dispute that GEROSCIENCE is the name of
applicant’s own journal (it does appear to be). However, providing
one’s own journal online is a completely different service than the
publication service that applicant has identified. For example, the
USPTO’s U.S. Acceptable Identification of Goods and Services
Manual (I.D. Manual), contains entries including “Providing
online nondownloadable journals in the field of {indicate field or
subject matter, e.g., medicine, sports law, etc.}” and “On-line
journals, namely, blogs featuring {indicate field or subject
matter}”. See the USPTO’s online searchable U.S. Acceptable
Identification of Goods and Services Manual. See TMEP §1402.04.
…
Here, while applicant is likely providing its own journal online
(and applicant states that this is true, “the mark,
‘GEROSCIENCE’, is used by Applicant, the American Aging
Association, as its ‘Official journal’ in connection with the
[identified] services”), this would properly be identified as
something like “Providing online non-downloadable electronic
publications in the nature of journals, research articles, and
scholarly essays in the field of the science of aging”. But, instead,
applicant’s identification of services is for a publishing serviceSerial No. 98353578 - 8 - (“providing online publication of journals, research articles, and scholarly essays in the field of the science of aging”), and an acceptable specimen for such publication service would require applicant to show that it provides publishing services for others (i.e., that applicant is a publishing company), not just that applicant has its own journal that is available online.12 The appeal then resumed.13 Applicant and the Examining Attorney filed briefs, and Applicant filed a reply brief. PRELIMINARY MATTER Before we get to the merits of the appeal, we address an evidentiary objection. The Examining Attorney objects to certain evidence that appears in Applicant’s appeal brief. Specifically, the Examining Attorney points to two website URLs, Applicant’s discussion of the information allegedly appearing on those websites, and a list of three third-party registrations.14 None of this evidence appears in the prosecution record. We agree with the Examining Attorney that presenting evidence for the first time in an appeal brief is too late. See Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d) (“The record should be complete prior to the filing of an appeal. Evidence should not be filed with the Board after the filing of a notice of appeal.”); In re Cunningham Holdings, LLC, No. 77483523, 2010 WL 985343, at *1 (TTAB 2010) (refusing to consider 12 See Dec. 18, 2025, Denial of Reconsideration, at TSDR 2-3. The USPTO makes its ID MANUAL, which the Examining Attorney referenced, available to the public, with the ability to download it or electronically search its contents, on its website at https://idm- tmng.uspto.gov/search/search-information (last checked Aug. 25, 2026). 13 See 5 TTABVUE. 14 See 8 TTABVUE 3.
Serial No. 98353578 - 9 - evidence attached for the first time to appeal brief as “untimely”). We therefore sustain the Examining Attorney’s objection. ANALYSIS Trademark Act Section 1(a), 15 U.S.C. § 1051(a), requires that any use-based application contain, inter alia, a “verified statement” that specifies that “the mark is in use in commerce,” as well as the goods in connection with which the mark is used. (While Section 1 refers to “goods,” Section 3 makes this provision applicable to services, as we noted earlier.) Section 1 also requires submission of “such number of specimens … of the mark as used in commerce as may be required by the Director.” Under Rule 2.56(b)(2), 37 C.F.R. § 2.56(b)(2), the specimen “must show the mark as used in the sale of the services, including use in the performance or rendering of the services, or in the advertising of the services.” Regarding specimens, the Federal Circuit’s predecessor court has stated: An important function of specimens in a trademark application is, manifestly, to enable the PTO to verify the statements made in the application regarding trademark use. In this regard, the manner in which an applicant has employed the asserted mark, as evidenced by the specimens of record, must be carefully considered in determining whether the asserted mark has been used as a trademark with respect to the goods [or services] named in the application. In re Bose Corp., 546 F.2d 893, 897 (CCPA 1976) (citations omitted). The identification of goods or services in an application is “critical because any
Serial No. 98353578 - 10 - registration that issues will carry that description.” CBS Inc. v. Morrow, 708 F.2d 1579, 1581 (Fed. Cir. 1983).15 The Examining Attorney called the refusal a “Specimen Refusal” and Applicant adopted that characterization. But our review of the briefing and the record reveals to us that the dispute in this case turns on a proper understanding of what the identified services, as amended, are. As we explain below, the Examining Attorney’s position reflects a misunderstanding of the amended services. The Examining Attorney seems to understand that Applicant’s amended services are “publishing services.” Take, for instance, these headings in the Examining Attorney’s brief: “1. Applicant’s specimens do not show that the publishing services identified in the identification of services for this application are provided in commerce to others.”;16 and “3. As used on the specimens of record, ‘GEROSCIENCE’ appears as the name of a periodical journal, not the name of a publishing service being offered to others in commerce.”17 The amended service identification, however, does not say “publishing services.” Rather, it identifies “providing online publication of journals … .” 15 A registration is prima facie evidence “of the owner’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate,” 15 U.S.C. 1057(b), and the registration by law provides constructive notice to the public of those defined rights. See 15 U.S.C. § 1072. 16 8 TTABVUE 6 (emphasis added). 17 Id. at 9 (emphasis added); see also 8 TTABVUE 5 (“All of the specimens of record show that the applicant is simply offering its own publications for customers to read online, not providing publishing services of such material for the works of others.”) (emphasis added).
Serial No. 98353578
- 11 -
Pertinently, the USPTO’s ID MANUAL lists, as an example of an acceptable
identification of Class 41 services, the following: “Online publication of journals.”18
And the Examining Attorney’s brief appears to concede, several times, that
Applicant’s specimens show the mark in use with online publication of journals:
• “All of the specimens of record show that the applicant is … offering its own
publications for customers to read online … .”;19
• “All three of applicant’s submitted specimens show that applicant is providing
its journal under the name ‘GEROSCIENCE’”;20
• “The specimens do show that applicant provides a journal”;21 and
• “[T]he specimens do appear to show that applicant is providing its own journal
online.”22
Further, the Examining Attorney’s brief notes that the two substitute specimens
“would serve as proper specimens for a Class 041 service, something like ‘Providing
online non-downloadable journals in the field of {indicate field or subject matter, e.g.,
medicine, sports law, etc.}’, just not for the specific services for which applicant has
applied.”23 This additional hypothetical identification posited by the Examining
18 See ID MANUAL (ID No. 041-2487). As explained in the USPTO TRADEMARK MANUAL OF
EXAMINING PROCEDURE (TMEP) § 1402.04 (May 2026), “[t]he ID Manual comprises a listing
of identifications of goods and services that is compiled by the Office of the Administrator for
Trademark Classification Policy and Practice …. The listing is not exhaustive, but is intended
to serve as a guide to examining attorneys in acting on applications and to the public in
preparing applications.”
19 8 TTABVUE 5.
20 Id.
21 Id. at 8.
22 Id. at 11 n.1.
23 See 8 TTABVUE 8 (emphasis in original).
As a general matter, we agree with the general legal principle enunciated by the
Examining Attorney that, where a specimen shows use for a service that is not the serviceSerial No. 98353578
- 12 -
Attorney appears in the USPTO’s ID MANUAL. See ID No. 041-1929. A nearly
identical identification also appears in the TRADEMARK MANUAL OF EXAMINING
PROCEDURE (TMEP) § 1402.11(a)(x) (“Online publications are non-downloadable
publications provided via the internet. All online publications are classified in Class
41 regardless of the subject matter. … An acceptable identification would be:
‘Providing on-line publications in the nature of {indicate specific nature of
publications} in the field of {indicate subject matter of publication},’ in Class 41.”)
(May 2026) (paragraph break omitted).
Thus, three things are clear from the Examining Attorney’s arguments:
1. Online publication of journals is an acceptable identification of services;
2. Applicant’s specimens show that it provides online publication of the journal
GEROSCIENCE; and
3. The Examining Attorney believes that Applicant’s amended identification is
for something other than online publication of journals. (In the Examining
Attorney’s words, Applicant’s amended identification is for “publishing
services.”).
Thus, we must determine what Applicant’s amended identification of services means.
If it means online publication of journals, the specimens are acceptable. If it means
something else, they might not be.
To provide additional context as to what the amended identification of services
means, it is useful to look at the various acceptable examples in the ID MANUAL of
identified in an application, that specimen would be unacceptable for the services in the
application. See, e.g., In re Weiss, No. 88621608, 2024 WL 3617597, at *9 (TTAB 2024). But
as we will explain, infra, we think the specimen does reflect the identified service, as
amended.Serial No. 98353578
- 13 -
Class 41 IDs that mention journals. There are several, and we reproduce below those
IDs with their corresponding ID numbers and any “note” accompanying them in the
ID MANUAL. They include the following, some of which are, and some of which are
not, accompanied by an identical “Note” (hereinafter, the “Note”):
ID wording ID number Note
Publication of journals 041-256
This refers to the service of publishing
the periodicals or printed matter of
others. Note that the publication of one’s
own periodical or printed matter is not a
service because it is done primarily for
applicant’s own benefit and not for the
benefit of others. Rather, it would be
considered goods in Class 16, e.g.,
newspapers, magazines.
Online publication of
journals24
041-2487 [no note]
Publishing of journals,
books and handbooks in
the field of medicine
041-492
This refers to the service of publishing
the periodicals or printed matter of
others. Note that the publication of one’s
own periodical or printed matter is not a
service because it is done primarily for
applicant’s own benefit and not for the
benefit of others. Rather, it would be
considered goods in Class 16, e.g.,
newspapers, magazines.
Providing online non-
downloadable journals
in the field of {indicate
field or subject matter,
e.g., medicine, sports
law, etc.}25
041-1929 [no note]
Publication of books, of
magazines, of journals,
of newspapers, of
This refers to the service of publishing
the periodicals or printed matter of
others. Note that the publication of one’s
24 Emphasis added.
25 Emphasis added. This is one ID that the Examining Attorney believes would fit the
substitute specimens. See 8 TTABVUE 8; see also Dec. 18, 2025, Denial of Reconsideration,
at TSDR 2. This form ID is substantively identical to the identification sanctioned in TMEP
§ 1402.11(a)(x), supra.Serial No. 98353578
- 14 -
ID wording ID number Note
periodicals, of catalogs,
of brochures
041-478 own periodical or printed matter is not a
service because it is done primarily for
applicant’s own benefit and not for the
benefit of others. Rather, it would be
considered goods in Class 16, e.g.,
newspapers, magazines.
Publication of
electronic books and
journals on-line26
041-2515 [no note]
On-line journals,
namely, blogs featuring
{indicate field or
subject matter}27
041-601 [no note]
The Examining Attorney’s objection to Applicant’s substitute specimens is based
on the principle enunciated in the Note.28 But, of the acceptable sample IDs listed
above, none that identify online/on-line services relating to journals are accompanied
by the Note. Only those that do not state that the services are online have the Note.
Applicant’s services, however, do state that the services are online: “providing online
publication of journals, research articles, and scholarly essays in the field of the
science of aging” (emphasis added).
26 Emphasis added.
27 Emphasis added.
28 See, e.g., Dec. 18, 2025, Denial of Reconsideration, at TSDR 2 (“Applicant has not
identified a service of providing its own journal, applicant has identified a publication service.
As the note in the I.D. manual under ‘Publication of journals’ explains, ‘This refers to the
service of publishing the periodicals or printed matter of others. Note that the publication of
one’s own periodical or printed matter is not a service because it is done primarily for
applicant’s own benefit and not for the benefit of others.’”); see also 8 TTABVUE 5 (“All of the
specimens of record show that the applicant is simply offering its own publications for
customers to read online, not providing publishing services of such material for the works of
others. The publication of one’s own periodical is not a service, because it is done primarily
for applicant’s own benefit and not for the benefit of others.”); id. at 6 (“[t]he publication of
one’s own periodical is not a service, because it is done primarily for applicant’s own benefit
and not for the benefit of others”); id. at 10 (same).Serial No. 98353578 - 15 - So why does the Examining Attorney think that the rationale behind the Note applies to Applicant’s online publication of journals? It appears to us to be because of the term “publication” appearing in Applicant’s services ID. This is reflected not only in the Examining Attorney’s brief headings listed above, but also in these additional statements the Examining Attorney has made in the case: • “The issue here is that the identification of services in this application is not for providing a journal online, the identification of services is for ‘providing online publication of journals, research articles, and scholarly essays in the field of the science of aging’ (emphasis added), and the submitted specimens do not show those identified services.”29 • “[P]roviding one’s own journal online is a completely different service than the publication service that applicant has identified.”30 • “Applicant has not identified a service of providing its own journal, applicant has identified a publication service.”31 • “[A]pplicant’s identification of services is for a publishing service … , and an acceptable specimen for such publication service would require applicant to show that it provides publishing services for others (i.e., that applicant is a publishing company), not just that applicant has its own journal that is available online.”32 The Examining Attorney also repeatedly invokes the TMEP’s statement—which is reflected in the Note, that “[t]he publication of one’s own periodical is not a service, because it is done primarily for applicant’s own benefit and not for the benefit of others” (emphasis added).33 29 8 TTABVUE 11 n.1 (bolding and italicizing in original). 30 Dec. 18, 2025, Denial of Reconsideration, at TSDR 2 (emphasis added). 31 Id. (emphasis added). 32 Id. at 2-3 (emphasis added; original emphasis by Examining Attorney deleted). 33 See 8 TTABVUE 5, 6, 10 (quoting TMEP §1301.01(b)(iii) (2026)).
Serial No. 98353578
- 16 -
It is thus clear that the Examining Attorney’s position is based on the terms
“publication of” in Applicant’s amended ID, and that the Examining Attorney equates
the phrase “publication of” with “publishing services.”
But the exemplars listed above in the ID MANUAL do not appear to hinge on the
presence of the term “publication” or “publishing.” As to the terms “publication of” or
“publishing of,” it is true that some of the sample IDs do contains the Note making
the distinction upon which the Examining Attorney bases the refusal.34 But other
sample IDs relating to journals contain “publication of” and do not contain the
Note.35 So the presence of the term “publication of” in Applicant’s amended
identification of services is not the trigger for Note in the ID MANUAL.
Rather, the list above makes clear that the critical distinction between those that
have the Note and those that do not is whether the publishing of the journals is
limited to “online” publication or is not so limited. When identification is limited to
publication of journals online, the ID MANUAL does not append the note, irrespective
of whether the phrase “publication of” appears.36 And the Examining Attorney has
confirmed, several times, that Applicant is providing the service of making its
34 See No. 041-256 (“Publication of journals”); No. 041-492 (“Publishing of journals, books
and handbooks in the field of medicine”); and No. 041-478 (“Publication of books, of
magazines, of journals, of newspapers, of periodicals, of catalogs, of brochures”).
35 No. 041-2487 (“Online publication of journals”) and No. 041-2515 (“Publication of
electronic books and journals on-line”) do not have the Note.
36 Similarly, Applicant’s use of the word “providing” does not appear to be critical to whether
the Note appears, since ID 041-1929—“Providing online non-downloadable journals in the
field of {indicate field or subject matter, e.g., medicine, sports law, etc.}”—does not have the
Note, and the Examining Attorney suggested that Applicant’s specimens show the service in
this ID. See 8 TTABVUE 8; Dec. 18, 2025, Denial of Reconsideration, at TSDR 2-3.Serial No. 98353578 - 17 - journals available online, that the substitute specimens show the mark in connection with that service, and that at least one of the example identification listed above would have been appropriate for that service and the specimens.37 We therefore believe that the specimen refusal here was based on a key misunderstanding of what Applicant’s amended identification of services means. When Applicant’s amended identification of services is correctly understood, Applicant’s specimens—comprising webpage screenshots with the mark and thumbnail images of the journal in downloadable form, as per TMEP § 1402.11(a)(x)—show use of the mark in connection with such services. While Applicant’s amended identification of services was not in the precise form of any of the Class 41 services pertaining to online journals listed above, the ID MANUAL’s list of acceptable IDs “is not exhaustive,” as TMEP § 1402.04 explains.38 One final observation. Given that the Examining Attorney has acknowledged, both in examination and on this appeal, that the substitute specimens do indeed show Applicant is using the mark for at least one Class 41 service listed in the ID MANUAL, it seems to us that a phone conference to discuss tweaks to Applicant’s amended services identification in view of the “online” exemplars in the ID MANUAL might have 37 See Dec. 18, 2025, Denial of Reconsideration, at TSDR 2-3 (“Here, while applicant is likely providing its own journal online … , this would properly be identified as something like ‘Providing online non-downloadable electronic publications in the nature of journals, research articles, and scholarly essays in the field of the science of aging.’”). This uses the form exemplified by ID No. 041-1929 and mentioned in TMEP § 1402.11(a)(x). 38 See fn. 18, supra.
Serial No. 98353578 - 18 - obviated the misunderstanding—and thus the specimen refusal—here.39 See TMEP § 709.01 (providing for interviews by phone “to develop and clarify specific issues and lead to a mutual understanding between the examining attorney and the applicant”). Decision: We reverse the specimen refusal. 39 Other possible ID forms that look adaptable to reflect the service shown by the substitute specimens include No. 041-2487 (“Online publication of journals [, research articles and scholarly essays in the field of the science of aging]”; No. 041-2515 (“Publication of electronic … journals [, research articles, and scholarly essays in the field of the science of aging] on- line”; No. 041-601 (“On-line journals, namely, [research articles, and scholarly essays in the field of the science of aging]”). None of these example ID forms from the MANUAL contain the Note.
OCR transcription for search; preserved printed pages are authoritative
This opinion is not a
precedent of the TTAB
Mailed: August 26, 2026
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
In re American Aging Association, Inc.
Serial No. 98353578
Duncan Palmatier, of Law Office of Duncan Palmatier,
for American Aging Association, Inc.
Ashton Copeland, Trademark Examining Attorney, Law Office 111,
Chris Doninger, Managing Attorney.
Before Goodman, Casagrande, and Brock,
Administrative Trademark Judges.
Opinion by Casagrande, Administrative Trademark Judge:
This appeal concerns a refusal to register on the ground that the specimens do not
show use of the mark on or in connection with the services identified in the amended
application. We reverse.
BACKGROUND
To understand the issue this appeal presents, it is helpful to lay out the pertinent
aspects of the prosecution history. Applicant American Aging Association, Inc.,
applied to register the mark GEROSCIENCE (in standard characters) for services
Serial No. 98353578
- 2 -
originally identified as “Publication of journals, research articles, and scholarly
essays in the field of the science of aging,” in International Class 41.1 As part of its
application, Applicant submitted the cover of one issue of a journal entitled
GEROSCIENCE as a specimen of use. The Examining Attorney issued a Nonfinal
Office Action refusing registration, resting the refusal in part on the ground that the
specimen did not show use of the mark for the identified services under Trademark
Act §§ 1 & 45, 15 U.S.C. §§ 1051 & 1127,2 saying:
“Publication” refers to the service of publishing the periodicals or
printed matter of others. The publication of one’s own periodical
or printed matter is not a service because it is done primarily for
applicant’s own benefit and not for the benefit of others (rather,
it would be considered goods in Class 16, like newspapers,
magazines, or books).3
In response to the specimen refusal, Applicant did two things. It amended the
services by limiting them to “online” publication: “providing online publication of
1 Applicant filed Application No. 98353578 on January 11, 2024, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based on Applicant’s claim of first use anywhere at least
as early as September 15, 2016, and first use in commerce of March 19, 2017.
2 We observe that the refusal should also have listed Section 3 of the Act, 15 U.S.C. § 1053,
because the application identifies only services, not goods. Section 3 makes the provisions of
Section 1, whose terms concern goods, applicable to services. This observation does not affect
our analysis of the merits of the appeal.
3 See Aug. 13, 2024, Nonfinal Office Action, at TSDR 3-4. Citations to the application record
refer to the version of the documents as downloaded in .pdf format from the USPTO’s
Trademark Status and Document Retrieval (TSDR) database.
This Nonfinal Office Action also included a “Merely Descriptive Refusal” under Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1). Applicant’s response claimed ownership
of Registration No. 5243186, which issued on July 11, 2017, on the Supplemental Register
for the mark GEROSCIENCE for the same services identified in the current application. See
February 13, 2025, Response to Nonfinal Office Action, at TSDR 3. Applicant also asserted a
claim of acquired distinctiveness under Section 2(f) of the Act, 15 U.S.C. § 1052(f), see id. at
TSDR 3-4, which the Examining Attorney later accepted, resolving the Section 2(e)(1) refusal.
Serial No. 98353578
- 3 -
journals, research articles, and scholarly essays in the field of the science of aging.”4
Applicant also submitted a substitute specimen which Applicant described as
“webpage of GeroScience June 2023 Volume 45, Issue 3, cover, and list of articles.”5
The first two pages of the screenshots are depicted below:6
4 See Feb. 13, 2025, Response to Nonfinal Office Action, at TSDR 3.
5 Id. at 34-44.
6 Applicant’s brief does not argue that the original specimen is sufficient as to the amended
services, so we need not depict or discuss it.
Serial No. 98353578
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Neuronal properties of pyramidal cells in lateral prefrontal cortex of the
aging rhesus monkey brain are associated with performance deficits on
spatial working memory but not executive function
ORIGINALARTICLE 28April2023 Pages: 1317-1342
| Part of 1 collection:
Advances in Neurostimulation in Aging: From Basic Science to Clinical Applications
Geroprotective interventions in the 3xTg mouse model of Alzheimer’s
disease ; x
Review OG6April2023 Pages: 1343-1381
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Enhancing Health-span through Anti-Aging Dietary Interventions
The aging of the immune system and its implications for transplantation eee
2/13/2025, 12:00 PM
Serial No. 98353578
- 6 -
The Examining Attorney issued a Final Office Action that acknowledged
Applicant’s amendment to the identification of services but nevertheless made the
specimen refusal final.7 Applicant appealed8 and requested reconsideration.9 We
suspended the appeal, remanding to the Examining Attorney to consider the request
for reconsideration.10
Applicant’s reconsideration request attached a “corrected substitute specimen”
consisting of “a photograph of the [same webpage submitted as a substitute specimen
in the February 13, 2025, Response to Nonfinal Office Action] on a computer screen,
as seen by a viewer.”11 This photograph is depicted below:
7 See May 23, 2025, Final Office Action, at TSDR 2.
8 See 1 TTABVUE. References to the briefs and appeal record cite to the Board’s TTABVUE
electronic docket system. The number preceding “TTABVUE” represents the docket number
in TTABVUE and any number following “TTABVUE” is the specifically-cited page(s), if any.
9 See Nov. 19, 2025, Reconsideration Request.
10 See 2 TTABVUE.
11 See Nov. 19, 2025, Reconsideration Request, at TSDR 7 (description); id. at 9 (specimen).
Serial No. 98353578
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The Examining Attorney denied reconsideration, stating:
It is not in dispute that GEROSCIENCE is the name of
applicant’s own journal (it does appear to be). However, providing
one’s own journal online is a completely different service than the
publication service that applicant has identified. For example, the
USPTO’s U.S. Acceptable Identification of Goods and Services
Manual (I.D. Manual), contains entries including “Providing
online nondownloadable journals in the field of {indicate field or
subject matter, e.g., medicine, sports law, etc.}” and “On-line
journals, namely, blogs featuring {indicate field or subject
matter}”. See the USPTO’s online searchable U.S. Acceptable
Identification of Goods and Services Manual. See TMEP §1402.04.
…
Here, while applicant is likely providing its own journal online
(and applicant states that this is true, “the mark,
‘GEROSCIENCE’, is used by Applicant, the American Aging
Association, as its ‘Official journal’ in connection with the
[identified] services”), this would properly be identified as
something like “Providing online non-downloadable electronic
publications in the nature of journals, research articles, and
scholarly essays in the field of the science of aging”. But, instead,
applicant’s identification of services is for a publishing service
Serial No. 98353578
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(“providing online publication of journals, research articles, and
scholarly essays in the field of the science of aging”), and an
acceptable specimen for such publication service would require
applicant to show that it provides publishing services for others
(i.e., that applicant is a publishing company), not just that
applicant has its own journal that is available online.12
The appeal then resumed.13 Applicant and the Examining Attorney filed briefs,
and Applicant filed a reply brief.
PRELIMINARY MATTER
Before we get to the merits of the appeal, we address an evidentiary objection. The
Examining Attorney objects to certain evidence that appears in Applicant’s appeal
brief. Specifically, the Examining Attorney points to two website URLs, Applicant’s
discussion of the information allegedly appearing on those websites, and a list of three
third-party registrations.14 None of this evidence appears in the prosecution record.
We agree with the Examining Attorney that presenting evidence for the first time in
an appeal brief is too late. See Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d) (“The
record should be complete prior to the filing of an appeal. Evidence should not be filed
with the Board after the filing of a notice of appeal.”); In re Cunningham Holdings,
LLC, No. 77483523, 2010 WL 985343, at *1 (TTAB 2010) (refusing to consider
12 See Dec. 18, 2025, Denial of Reconsideration, at TSDR 2-3. The USPTO makes its ID
MANUAL, which the Examining Attorney referenced, available to the public, with the ability
to download it or electronically search its contents, on its website at https://idm-
tmng.uspto.gov/search/search-information (last checked Aug. 25, 2026).
13 See 5 TTABVUE.
14 See 8 TTABVUE 3.
Serial No. 98353578
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evidence attached for the first time to appeal brief as “untimely”). We therefore
sustain the Examining Attorney’s objection.
ANALYSIS
Trademark Act Section 1(a), 15 U.S.C. § 1051(a), requires that any use-based
application contain, inter alia, a “verified statement” that specifies that “the mark is
in use in commerce,” as well as the goods in connection with which the mark is used.
(While Section 1 refers to “goods,” Section 3 makes this provision applicable to
services, as we noted earlier.) Section 1 also requires submission of “such number of
specimens … of the mark as used in commerce as may be required by the Director.”
Under Rule 2.56(b)(2), 37 C.F.R. § 2.56(b)(2), the specimen “must show the mark as
used in the sale of the services, including use in the performance or rendering of the
services, or in the advertising of the services.”
Regarding specimens, the Federal Circuit’s predecessor court has stated:
An important function of specimens in a trademark application
is, manifestly, to enable the PTO to verify the statements made
in the application regarding trademark use. In this regard, the
manner in which an applicant has employed the asserted mark,
as evidenced by the specimens of record, must be carefully
considered in determining whether the asserted mark has been
used as a trademark with respect to the goods [or services] named
in the application.
In re Bose Corp., 546 F.2d 893, 897 (CCPA 1976) (citations omitted). The
identification of goods or services in an application is “critical because any
Serial No. 98353578
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registration that issues will carry that description.” CBS Inc. v. Morrow, 708 F.2d
1579, 1581 (Fed. Cir. 1983).15
The Examining Attorney called the refusal a “Specimen Refusal” and Applicant
adopted that characterization. But our review of the briefing and the record reveals
to us that the dispute in this case turns on a proper understanding of what the
identified services, as amended, are. As we explain below, the Examining Attorney’s
position reflects a misunderstanding of the amended services.
The Examining Attorney seems to understand that Applicant’s amended services
are “publishing services.” Take, for instance, these headings in the Examining
Attorney’s brief:
“1. Applicant’s specimens do not show that the publishing services identified
in the identification of services for this application are provided in
commerce to others.”;16 and
“3. As used on the specimens of record, ‘GEROSCIENCE’ appears as the name
of a periodical journal, not the name of a publishing service being offered
to others in commerce.”17
The amended service identification, however, does not say “publishing services.”
Rather, it identifies “providing online publication of journals … .”
15 A registration is prima facie evidence “of the owner’s exclusive right to use the registered
mark in commerce on or in connection with the goods or services specified in the certificate,”
15 U.S.C. 1057(b), and the registration by law provides constructive notice to the public of
those defined rights. See 15 U.S.C. § 1072.
16 8 TTABVUE 6 (emphasis added).
17 Id. at 9 (emphasis added); see also 8 TTABVUE 5 (“All of the specimens of record show
that the applicant is simply offering its own publications for customers to read online, not
providing publishing services of such material for the works of others.”) (emphasis added).
Serial No. 98353578
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Pertinently, the USPTO’s ID MANUAL lists, as an example of an acceptable
identification of Class 41 services, the following: “Online publication of journals.”18
And the Examining Attorney’s brief appears to concede, several times, that
Applicant’s specimens show the mark in use with online publication of journals:
• “All of the specimens of record show that the applicant is … offering its own
publications for customers to read online … .”;19
• “All three of applicant’s submitted specimens show that applicant is providing
its journal under the name ‘GEROSCIENCE’”;20
• “The specimens do show that applicant provides a journal”;21 and
• “[T]he specimens do appear to show that applicant is providing its own journal
online.”22
Further, the Examining Attorney’s brief notes that the two substitute specimens
“would serve as proper specimens for a Class 041 service, something like ‘Providing
online non-downloadable journals in the field of {indicate field or subject matter, e.g.,
medicine, sports law, etc.}’, just not for the specific services for which applicant has
applied.”23 This additional hypothetical identification posited by the Examining
18 See ID MANUAL (ID No. 041-2487). As explained in the USPTO TRADEMARK MANUAL OF
EXAMINING PROCEDURE (TMEP) § 1402.04 (May 2026), “[t]he ID Manual comprises a listing
of identifications of goods and services that is compiled by the Office of the Administrator for
Trademark Classification Policy and Practice …. The listing is not exhaustive, but is intended
to serve as a guide to examining attorneys in acting on applications and to the public in
preparing applications.”
19 8 TTABVUE 5.
20 Id.
21 Id. at 8.
22 Id. at 11 n.1.
23 See 8 TTABVUE 8 (emphasis in original).
As a general matter, we agree with the general legal principle enunciated by the
Examining Attorney that, where a specimen shows use for a service that is not the service
Serial No. 98353578
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Attorney appears in the USPTO’s ID MANUAL. See ID No. 041-1929. A nearly
identical identification also appears in the TRADEMARK MANUAL OF EXAMINING
PROCEDURE (TMEP) § 1402.11(a)(x) (“Online publications are non-downloadable
publications provided via the internet. All online publications are classified in Class
41 regardless of the subject matter. … An acceptable identification would be:
‘Providing on-line publications in the nature of {indicate specific nature of
publications} in the field of {indicate subject matter of publication},’ in Class 41.”)
(May 2026) (paragraph break omitted).
Thus, three things are clear from the Examining Attorney’s arguments:
1. Online publication of journals is an acceptable identification of services;
2. Applicant’s specimens show that it provides online publication of the journal
GEROSCIENCE; and
3. The Examining Attorney believes that Applicant’s amended identification is
for something other than online publication of journals. (In the Examining
Attorney’s words, Applicant’s amended identification is for “publishing
services.”).
Thus, we must determine what Applicant’s amended identification of services means.
If it means online publication of journals, the specimens are acceptable. If it means
something else, they might not be.
To provide additional context as to what the amended identification of services
means, it is useful to look at the various acceptable examples in the ID MANUAL of
identified in an application, that specimen would be unacceptable for the services in the
application. See, e.g., In re Weiss, No. 88621608, 2024 WL 3617597, at *9 (TTAB 2024). But
as we will explain, infra, we think the specimen does reflect the identified service, as
amended.
Serial No. 98353578
- 13 -
Class 41 IDs that mention journals. There are several, and we reproduce below those
IDs with their corresponding ID numbers and any “note” accompanying them in the
ID MANUAL. They include the following, some of which are, and some of which are
not, accompanied by an identical “Note” (hereinafter, the “Note”):
ID wording ID number Note
Publication of journals 041-256
This refers to the service of publishing
the periodicals or printed matter of
others. Note that the publication of one’s
own periodical or printed matter is not a
service because it is done primarily for
applicant’s own benefit and not for the
benefit of others. Rather, it would be
considered goods in Class 16, e.g.,
newspapers, magazines.
Online publication of
journals24
041-2487 [no note]
Publishing of journals,
books and handbooks in
the field of medicine
041-492
This refers to the service of publishing
the periodicals or printed matter of
others. Note that the publication of one’s
own periodical or printed matter is not a
service because it is done primarily for
applicant’s own benefit and not for the
benefit of others. Rather, it would be
considered goods in Class 16, e.g.,
newspapers, magazines.
Providing online non-
downloadable journals
in the field of {indicate
field or subject matter,
e.g., medicine, sports
law, etc.}25
041-1929 [no note]
Publication of books, of
magazines, of journals,
of newspapers, of
This refers to the service of publishing
the periodicals or printed matter of
others. Note that the publication of one’s
24 Emphasis added.
25 Emphasis added. This is one ID that the Examining Attorney believes would fit the
substitute specimens. See 8 TTABVUE 8; see also Dec. 18, 2025, Denial of Reconsideration,
at TSDR 2. This form ID is substantively identical to the identification sanctioned in TMEP
§ 1402.11(a)(x), supra.
Serial No. 98353578
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ID wording ID number Note
periodicals, of catalogs,
of brochures
041-478 own periodical or printed matter is not a
service because it is done primarily for
applicant’s own benefit and not for the
benefit of others. Rather, it would be
considered goods in Class 16, e.g.,
newspapers, magazines.
Publication of
electronic books and
journals on-line26
041-2515 [no note]
On-line journals,
namely, blogs featuring
{indicate field or
subject matter}27
041-601 [no note]
The Examining Attorney’s objection to Applicant’s substitute specimens is based
on the principle enunciated in the Note.28 But, of the acceptable sample IDs listed
above, none that identify online/on-line services relating to journals are accompanied
by the Note. Only those that do not state that the services are online have the Note.
Applicant’s services, however, do state that the services are online: “providing online
publication of journals, research articles, and scholarly essays in the field of the
science of aging” (emphasis added).
26 Emphasis added.
27 Emphasis added.
28 See, e.g., Dec. 18, 2025, Denial of Reconsideration, at TSDR 2 (“Applicant has not
identified a service of providing its own journal, applicant has identified a publication service.
As the note in the I.D. manual under ‘Publication of journals’ explains, ‘This refers to the
service of publishing the periodicals or printed matter of others. Note that the publication of
one’s own periodical or printed matter is not a service because it is done primarily for
applicant’s own benefit and not for the benefit of others.’”); see also 8 TTABVUE 5 (“All of the
specimens of record show that the applicant is simply offering its own publications for
customers to read online, not providing publishing services of such material for the works of
others. The publication of one’s own periodical is not a service, because it is done primarily
for applicant’s own benefit and not for the benefit of others.”); id. at 6 (“[t]he publication of
one’s own periodical is not a service, because it is done primarily for applicant’s own benefit
and not for the benefit of others”); id. at 10 (same).
Serial No. 98353578
- 15 -
So why does the Examining Attorney think that the rationale behind the Note
applies to Applicant’s online publication of journals? It appears to us to be because of
the term “publication” appearing in Applicant’s services ID. This is reflected not only
in the Examining Attorney’s brief headings listed above, but also in these additional
statements the Examining Attorney has made in the case:
• “The issue here is that the identification of services in this application is not
for providing a journal online, the identification of services is for ‘providing
online publication of journals, research articles, and scholarly essays in the
field of the science of aging’ (emphasis added), and the submitted specimens do
not show those identified services.”29
• “[P]roviding one’s own journal online is a completely different service than the
publication service that applicant has identified.”30
• “Applicant has not identified a service of providing its own journal, applicant
has identified a publication service.”31
• “[A]pplicant’s identification of services is for a publishing service … , and an
acceptable specimen for such publication service would require applicant to
show that it provides publishing services for others (i.e., that applicant is a
publishing company), not just that applicant has its own journal that is
available online.”32
The Examining Attorney also repeatedly invokes the TMEP’s statement—which
is reflected in the Note, that “[t]he publication of one’s own periodical is not a
service, because it is done primarily for applicant’s own benefit and not for the benefit
of others” (emphasis added).33
29 8 TTABVUE 11 n.1 (bolding and italicizing in original).
30 Dec. 18, 2025, Denial of Reconsideration, at TSDR 2 (emphasis added).
31 Id. (emphasis added).
32 Id. at 2-3 (emphasis added; original emphasis by Examining Attorney deleted).
33 See 8 TTABVUE 5, 6, 10 (quoting TMEP §1301.01(b)(iii) (2026)).
Serial No. 98353578
- 16 -
It is thus clear that the Examining Attorney’s position is based on the terms
“publication of” in Applicant’s amended ID, and that the Examining Attorney equates
the phrase “publication of” with “publishing services.”
But the exemplars listed above in the ID MANUAL do not appear to hinge on the
presence of the term “publication” or “publishing.” As to the terms “publication of” or
“publishing of,” it is true that some of the sample IDs do contains the Note making
the distinction upon which the Examining Attorney bases the refusal.34 But other
sample IDs relating to journals contain “publication of” and do not contain the
Note.35 So the presence of the term “publication of” in Applicant’s amended
identification of services is not the trigger for Note in the ID MANUAL.
Rather, the list above makes clear that the critical distinction between those that
have the Note and those that do not is whether the publishing of the journals is
limited to “online” publication or is not so limited. When identification is limited to
publication of journals online, the ID MANUAL does not append the note, irrespective
of whether the phrase “publication of” appears.36 And the Examining Attorney has
confirmed, several times, that Applicant is providing the service of making its
34 See No. 041-256 (“Publication of journals”); No. 041-492 (“Publishing of journals, books
and handbooks in the field of medicine”); and No. 041-478 (“Publication of books, of
magazines, of journals, of newspapers, of periodicals, of catalogs, of brochures”).
35 No. 041-2487 (“Online publication of journals”) and No. 041-2515 (“Publication of
electronic books and journals on-line”) do not have the Note.
36 Similarly, Applicant’s use of the word “providing” does not appear to be critical to whether
the Note appears, since ID 041-1929—“Providing online non-downloadable journals in the
field of {indicate field or subject matter, e.g., medicine, sports law, etc.}”—does not have the
Note, and the Examining Attorney suggested that Applicant’s specimens show the service in
this ID. See 8 TTABVUE 8; Dec. 18, 2025, Denial of Reconsideration, at TSDR 2-3.
Serial No. 98353578
- 17 -
journals available online, that the substitute specimens show the mark in connection
with that service, and that at least one of the example identification listed above
would have been appropriate for that service and the specimens.37 We therefore
believe that the specimen refusal here was based on a key misunderstanding of what
Applicant’s amended identification of services means.
When Applicant’s amended identification of services is correctly understood,
Applicant’s specimens—comprising webpage screenshots with the mark and
thumbnail images of the journal in downloadable form, as per TMEP
§ 1402.11(a)(x)—show use of the mark in connection with such services. While
Applicant’s amended identification of services was not in the precise form of any of
the Class 41 services pertaining to online journals listed above, the ID MANUAL’s list
of acceptable IDs “is not exhaustive,” as TMEP § 1402.04 explains.38
One final observation. Given that the Examining Attorney has acknowledged,
both in examination and on this appeal, that the substitute specimens do indeed show
Applicant is using the mark for at least one Class 41 service listed in the ID MANUAL,
it seems to us that a phone conference to discuss tweaks to Applicant’s amended
services identification in view of the “online” exemplars in the ID MANUAL might have
37 See Dec. 18, 2025, Denial of Reconsideration, at TSDR 2-3 (“Here, while applicant is likely
providing its own journal online … , this would properly be identified as something like
‘Providing online non-downloadable electronic publications in the nature of journals, research
articles, and scholarly essays in the field of the science of aging.’”). This uses the form
exemplified by ID No. 041-1929 and mentioned in TMEP § 1402.11(a)(x).
38 See fn. 18, supra.
Serial No. 98353578
- 18 -
obviated the misunderstanding—and thus the specimen refusal—here.39 See TMEP
§ 709.01 (providing for interviews by phone “to develop and clarify specific issues and
lead to a mutual understanding between the examining attorney and the applicant”).
Decision: We reverse the specimen refusal.
39 Other possible ID forms that look adaptable to reflect the service shown by the substitute
specimens include No. 041-2487 (“Online publication of journals [, research articles and
scholarly essays in the field of the science of aging]”; No. 041-2515 (“Publication of electronic
… journals [, research articles, and scholarly essays in the field of the science of aging] on-
line”; No. 041-601 (“On-line journals, namely, [research articles, and scholarly essays in the
field of the science of aging]”). None of these example ID forms from the MANUAL contain the
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