Friday, November 04, 2011

Precedential No. 28: TTAB Reverses Genericness Refusal of COUNTRY MUSIC ASSOCIATION for Country Music Association Services

As George Strait would say, Write This Down! The 45th Annual CMA Awards will be presented on Wednesday night, November 9th, on ABC. Maybe they'll announce the CMA's victory in this TTAB case? CMA sought to register COUNTRY MUSIC ASSOCIATION and the logo mark shown below for “association services, namely, promoting country music, and promoting the interests of country music entertainers and the country music recording industry," asserting that the marks had acquired distinctiveness under Section 2(f). The Examining Attorney refused registration on alternative grounds: genericness, or mere descriptiveness and lack of secondary meaning. The Board reversed the refusals but required a disclaimer of the word ASSOCIATION. In re Country Music Association, Inc., 100 USPQ2d 1824 (TTAB 2011) [precedential].

Genericness: The Board began by defining the genus of services to be those identified in the applications. This was confirmed by Applicant's specimen of use, which referred to CMA as "a professional trade association, [with] membership ... available to those working in the Country Music industry." Everyone agreed that the relevant purchasing public "consists of the general public who listen to country music and those who are associated with the country music industry."

The question, then, was "whether the designation COUNTRY MUSIC ASSOCIATION is understood by the relevant purchasing public as primarily referring to association services which promote country music and the interests of professionals in the country music recording industry."

The Examining Attorney provided website evidence that 28 other associations use the phrase COUNTRY MUSIC ASSOCIATION preceded by a descriptive, geographical, or other term - e.g., Gay & Lesbian, Christian, Illinois - and he contended that, unlike in American Fertility, the phrase COUNTRY MUSIC ASSOCIATION is used generically. The Board pooh-poohed this evidence, finding it not clear enough, in part because the phrase appeared in initial caps in these names and because website data showed that these websites were "comparatively obscure" and had limited exposure.

CMA submitted two expert reports, but the first, which relied on dictionary definitions to conclude that because applicant's mark includes the term 'association,' it must be a brand name," was deemed to be flawed and its conclusion devoid of foundation. The second consisted of the same expert's review of various databanks, in which he found that in the LEXIS database, 99% of the usage of the phrase COUNTRY MUSIC ASSOCIATION was in initial caps. He pointed to many U.S. registrations which show, according to the Board, that "trademark owners view the term ASSOCIATION as part of their marks."

Perhaps most significantly, CMA submitted the results of a Teflon survey, in which "[a] significant number of surveyed respondents, 85%, answered that COUNTRY MUSIC ASSOCIATION is a brand name." The survey expert, Dr. Gerald L. Ford, concluded that the term 'country music association' is perceived by listeners of country western music as a proprietary or brand name, and not a generic term." Despite the Examining Attorney's rather feeble objections, the Board found the survey to be probative.

On balance, the Board found that the PTO had failed to meet its burden of proof by clear evidence. Moreover, any doubts must be resolved in Applicant's favor:

Both the results of Dr. Ford’s survey showing that a significant percentage of respondents who listen to country western music identify applicant’s mark as a brand name and Dr. Barnhart’s survey results showing that virtually all sampled written usages of the phrase COUNTRY MUSIC ASSOCIATION refer to applicant are sufficient to raise doubts regarding the genericness of applicant’s mark.

The Board did, however, find the word ASSOCIATION to be generic for the services, and it required a disclaimer of ASSOCIATION.

Acquired Distinctiveness: By seeking registration via Section 2(f), Applicant conceded that COUNTRY MUSIC ASSOCIATION is merely descriptive. However, the evidence convinced the Board that the mark had acquired distinctiveness. The mark has been in use since 1958 and 30 million viewers watch its annual awards show. Advertising expenditures, website traffic, and the survey results led the Board to find that CMA had satisfied Section 2(f). However, disclaimer of ASSOCIATION was again required.

And so the Board reversed both refusals to register with regard to both applications.

Text Copyright John L. Welch.


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