Monday, December 17, 2012

Precedential No. 38: Screenshot of YouTube Music Video Not a Proper Trademark Specimen Absent Download Link

Gary J. Rogowski sought to register the trademark ACTIVE REASONER for "audio recordings featuring music" in class 9. His specimen of use consisted of a screen shot of his YouTube webpage (see image below). Examining Attorney Janet H. Lee issued a refusal to register on the ground that the specimen of use failed to show the mark in direct connection with the identified goods. The Board affirmed, drawing a parallel with cases in which a website fails to provide means for ordering a product, ruled that "in the absence of a 'download' link or the equivalent thereof, applicant’s specimen on its face fails to show use of his mark in commerce for the identified goods." In re Rogowski, 104 USPQ2d 2012 (TTAB 2012) [precedential].

(click on photo for larger picture)

Section 1(d)(1) of the Trademark Act, 15 U.S.C. § 1051(d)(1), requires that the applicant file a “specimen” or facsimile “of the mark as used in commerce.” Under Section 45, 15 U.S.C. § 1127, use in commerce requires that the mark be "placed in any manner on the goods or their containers or the displays associated therewith... and the goods are sold or transported in commerce ...." 15 U.S.C. § 1127.

The examining attorney maintained that the mark as used on the specimen appears to identify a "non-downloadable musical video performance that has been uploaded onto, or is streamed on the YouTube website, in International Classes 038 and 041, respectively." She further contended that the specimen is unacceptable because it "fails to indicate that the audio recording may be downloadable."

Applicant Rogowski, appearing pro se, asserted that his music video is downloadable because there are "many computer programs available for free, on the internet, which enable the user to download music and video."

The Board noted that class 9 encompasses both audio recordings in both downloadable and tangible form, and Rogowski's identification of goods is sufficient broad to cover musical sound recordings in both formats. It observed that the specimen of use includes the ACTIVE REASONER mark in the top left corner of the screenshot, with a "Subscribe" button close by. The mark appears again on the right side, above a hyper-linked list of Rogowski's songs available on YouTube.

The Board recognized Rogowski's YouTube video as an "audio recording featuring music," but it concluded that the specimen "does not show the required correspondence between the mark and the identified goods being offered for sale or transported in commerce."

We acknowledge the advent and certainly the trend of music being offered in downloadable formats or the equivalent thereof in lieu of the traditional trade channels for tangible sound recordings, e.g., CDs being sold via retail or online stores. But we nonetheless find dispositive that applicant’s specimen does not include a “download” or similar link to put the consumer on notice that the identified goods (“audio recordings featuring music”) are indeed available for download or the equivalent thereof.

The Board likened this case to on-line retailing cases in which a webpage specimen fails to provide a means for ordering the goods or services. Cf. In re Dell Inc., 71 USPQ2d 1725, 1727 (TTAB 2004) (website specimen for downloadable computer software acceptable when it includes means to download, purchase or order the software).

The Board noted Rogowski's assertion regarding third-party software, but nonetheless, "in the absence of a 'download' link or the equivalent thereof, applicant's specimen on its face fails to show use of his mark in commerce for the identified goods."

TTABlog comment: Is the Board slicing the baloney a little too thin here? So thin you can see right through it? [LOL. I haven't used that line in about 17 years].

What if Rogowski included a statement with his YouTube uploads saying that he consents to the downloading and copying of his YouTube videos?

Post your comment here.

Text Copyright John L. Welch 2012.


At 8:25 AM, Anonymous Anonymous said...

So, let's say a blogger ran a header stating that he consented to a user printing off any Fairey-like images from his site, the blog page would be an acceptable specimen for art prints, right? I like where you're going! If the blogger further consented to a user printing the image and EATING it, I guess that would be a good specimen for balogna . . .

At 8:50 AM, Blogger Frank said...

This case highlights the ridiculous distinction between downloadable and non-downloadable in 2012. EVERYTHING is downloadable today.

At 9:02 AM, Blogger John L. Welch said...

Anonymous, you are definitely cutting the baloney too thin!

At 1:10 PM, Anonymous Thilo said...

That slice of baloney is about 1 micron thick, I think...

At 1:18 PM, Anonymous Bill said...

Besides the TTAB not being "in tune" with today's technology, the better question is: isn't this a video recording, not an audio recording?

At 5:44 PM, Blogger ChristianZ said...

I have seen other entities print out web pages and send that in as proof and still have it successfully go through.


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