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 In re The Wrestling Zone, Inc., Serial No. 77561949 (November 2, 2009) [not precedential].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.
posted by John L. Welch @ 11/24/2009
4 comments
4 Comments:
This is a horrible decision. The specimen refers to the services and prominently shows the mark. Nothing more should be needed. Is it the best specimen? Of course not. But the USPTO does not have a right to demand the best specimen, just one that satisfies the statute.
I think the PTO is WAAAY off base in requiring that specimens for service marks mention the service. They don't require that specimens for trademarks mention the goods; they take the word of the applicant that the trademark specimen is used on the goods. Why can't they do that for servicemarks?
If you look at the TMEP section where this "requirement" is set forth, and the original case there from which the TMEP editor made up the rule, the court was focussed on whether the services were being performed at all. The court cited as evidentiary support for its finding that they were not being performed the fact that the specimen did not mention them. That dictum has been bootstrapped into a hard and fast rule by the PTO bureaucrats that the specimen for a servicemark must mention the service. Arrrrgh!
I agree with this decision. The applicant is not performing the television transmission services and the specimen does not support that.
I also do not think that mentioning the services in the specimen is a PTO requirement, although the rules may incorrectly state that. Similar to their mis-interpretation of the Lands End test. I have written arguments against simlilar rejections concerning the mentioning of the services in the specimen(see Reg. No. 3460190) or the use of the mark in close proximity to a picture of the goods in a catalogue (See Reg. No.3323799). But it all depends on your facts.
I think this is an absolutely proper decision. Applicant is not really providing an on-demand service, i.e. not actually transmitting signals or running the cable tv service. This really deals with a poorly written or misclassified identification of services in the application that the Board had to take at face value.
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