TTAB Tosses "WEW" Specimen Out of PTO Ring
Pointing out that it is "not enough that the mark and the services both appear in the same specimen," the Board upheld a refusal to register the mark WEW for "pay-per-view and on-demand television transmissions of live wrestling exhibitions." Examining Attorney Judy Helfman had refused registration under Sections 1, 3 and 45 of the Trademark Act on the ground that the specimen does not show use of the mark for the identified services as required by Trademark Rule 2.56. The Board agreed. In re The Wrestling Zone, Inc., Serial No. 77561949 (November 2, 2009) [not precedential].
The Board agreed with the Applicant that "video-on-demand" states a service and that the specimen "refers" to the service. But stripped down to its bare essentials, the problem was this: "the specimen must not only contain a reference to the service, but also the mark must be used on the specimen to identify the service and its source."
The poster is an advertisement for services, but not for a video-on-demand service. It is an advertisement for an entertainment event, and the mark WEW as used in the advertisement identifies the nature of the entertainment, i.e., WOMENS EROTIC WRESTLING and a NUDE STREET FIGHT. The reference to video-on-demand on the specimen is used only in an informational sense to notify the public of the options available for viewing the wrestling event.
The Board concluded that the mark "would be perceived by the public only as identifying applicant's entertainment services, and not as identifying the form in which the entertainment is transmitted to the public, that is by means of video-on-demand. Thus, the required direct association between the mark WEW and the video-on-demand service cannot be made."
And so the Board affirmed the refusal.
Text Copyright John L. Welch 2009.