Thursday, June 16, 2011

TTAB Finds RADIO-INFO.COM to be Generic for ... Guess What?

Applying both the Gould [compound word] and American Fertility [phrase] analyses, the Board affirmed a genericness refusal of the term RADIO-INFO.COM for providing online news and information in the field of radio entertainment. It distinguished this case from those involving magazine titles, and rejected Applicant's argument that a "mixed record" precluded a finding of genericness. In re in3media, Inc., Serial No. 77171708 (June 1, 2011) [not precedential].

The Board found the genus of goods to be adequately defined by Applicant's recitation of services: roughly, online information services in the radio field. The relevant public includes people in the industry and the general public interested in radio broadcasting, personalities, and programming.

Examining Attorney Jason Paul Blair relied on dictionary definitions of "radio," "information," and "info," and on third-party websites using those terms in connection with the provision of information in the field of radio.

The Board found "radio-info" to be a compound term subject to the Gould analysis. The TLD ".com" does not present an "exceptional circumstance" that would require according it any trademark significance. In short, RADIO-INFO.COM is "no more than the sum of its parts." Moreover, to the extent that RADIO-INFO.COM could be considered a phrase rather than a compound term, it would be generic under the American Fertility analysis, since the evidence included use of RADIO-INFO and RADIO-INFORMATION as a whole.

Applicant pointed to the results of a survey conducted in an attempt to show acquired distinctiveness, but the Board found the survey lacking in probative value. The participants were limited to people already on Applicant's website, skewing the results. Moreover, it did not follow the accepted "Teflon" methodology. And, the Board noted, "consumers may automatically equate a domain name with a brand name."

Applicant next argued that cases dealing with magazine titles are analogous to this situation. The Board recognized that magazine title present a particular dilemma:

"unlike most goods whose appearance will convey their nature, periodicals must depend principally on their titles to convey their character [and c]ourts have been reluctant to find a magazine title generic, perhaps in part because the magazines in such cases were not literally the class title designated but were about that class."

However, "a domain name is an address, and when used as a trademark is not a title. Moreover, in this case, RADIO-INFO.COM, is the service, namely, online radio information." As the Examining Attorney argued: "[A] magazine is not the same thing as information itself. Applicant's service of providing information, however, is the same thing as the actual information itself." And so, the Board declined to extend the treatment of magazine titles to domain names.

Finally, contrary to Applicant's contention, the evidence did not present a "mixed record" sufficient to rebut the Examining Attorney's prima facie case.

In sum, the Board was satisfied that the evidence fell within "the guidelines set forth in Ginn and applied in similar circumstances" [citing the MATTRESS.COM, HOTELS.COM, and LAWYERS.COM cases].

Concluding that the term is, the Board declined to address Applicant's argument that the term is merely descriptive and has acquired distinctiveness.

TTABlog comment: Is the value of a domain name directly proportional to its genericness?

Text Copyright John L. Welch 2011.


At 11:00 AM, Anonymous Joe Dreitler said...

John, a rhetorical question no doubt. Indeed, so called marketers still believe a generic or merely descriptive term which is not protectable is better from a marketing standpoint....until a 3rd party uses the same thing of course.


Post a Comment

<< Home