TTAB Okays Single DVD as Specimen for Ongoing TV Series, "EVERYBODY I EVER SLEPT WITH"
Pointing out that the PTO seemingly confused the use of the mark on a promotional DVD, which is a single work and an acceptable specimen, with a mark being the title of a single work, the Board reversed a refusal to register the mark EVERYBODY I EVER SLEPT WITH for “providing on-going television programs in the field of romance." In re Atlas Media Corp., Serial No. 76655719 (January 27, 2009) [not precedential].
The PTO refused to register on the ground that the mark is used only as the title of a single work. It therefore does not function as a service mark and is not registrable, under established law.
However, the Board found it "clear from both the recitation of services" and from Applicant's declaration stating that "the DVD … is a promotional communication to obtain advertisers of the television program…" and that “the content of the DVD has images of selected reference-identified EVERYBODY I EVER SLEPT WITH ongoing television exemplary broadcasts," that applicant uses the mark EVERYBODY I EVER SLEPT WITH to identify a series of television broadcasts. So, the Board concluded, it is not the title of only a single work or episode.
It appears that the examining attorney has confused the use of the mark on the promotional DVD, which is a single work and an acceptable specimen, with a mark being the title of a single work, which it is not because it identifies an ongoing television series. Accordingly, the refusal is not well taken.
The Board therefore reversed the not-well-taken refusal.
Frequent appellate advocate Myron Amer brought this successful appeal. Somewhat interestingly, last summer he lost an appeal from a refusal to register FREEDOMSTONE for building stones, the Board finding that FREEDOMSTONE is the name of a single artistic work: the cornerstone for the Freedom Tower building under construction at the World Trade Center site in New York City. [TTABlogged here].
Text Copyright John L. Welch 2009.