Friday, July 13, 2012

TTAB Affirms Genericness Refusal of ADMEDIA for ... Guess What?

The TTAB affirmed a refusal to register the proposed mark ADMEDIA on the Supplemental Register, finding it to be generic for various advertising and marketing services. Despite minimal evidence of use of the compound term, there was "ample evidence to support the
relevant public’s understanding of the term ADMEDIA to refer to the genus of services" In re Interactive Media, No. 77832668 (June 18, 2012) [not precedential].

The Board rejected the genera proposed by the PTO and Applicant, and instead found that the genus is appropriately defined by Applicant's recitation of services, re-organized and "condensed" as follows:

Advertising agencies; and Services of advertising agencies; Preparing and placing advertisements for others; Preparation and realization of media and advertising plans and concepts; Advertising, advertisement, marketing, promotion and publicity services; Advertising consultation; On-line advertising services for others; Advertising services, namely, promoting the books of others in the field of law by means of news and reviews regarding same; Advertising services, namely, cost-per-action on-line advertising; Advertising via electronic media and specifically the internet; Pay per click (PPC) advertising management services; Providing and rental of advertising space on the internet and websites; Provision of space on websites for advertising goods and services; Mediation of advertising.

The Board next found the relevant public to be "those entities who advertise and market their products and services whether through traditional means or via online or digital methods." There was no evidence that the relevant public includes end users or the general public.

The Board then turned to assessing the meaning of ADMEDIA to the relevant public. The Board applied the Gould analysis to this compound term, whereby "the USPTO may satisfy its burden of proving a term generic by producing evidence that each of the constituent words is generic, and that 'the separate words joined to form a compound have a meaning identical to the meaning common usage would ascribe to those words as a compound.'"

Here the joining of the terms "ad" and "media" does not create any new meaning or impression beyond that of the constituent words. The Examining Attorney relied on dictionary definitions, third-party websites, third-party registrations containing disclaimers of "ad" or "media," and Lexis-Nexis articles, the latter demonstrating that "not only is the term 'ad media' used as a variant of 'advertising media,' it also is used in a broad sense to refer to an industry which provides the types of services offered by applicant and covered in the genus established for this case."

The Board concluded that ADMEDIA is generic with respect to at least some of the services in the genus, and therefore registration was properly refused.

The recitation of services relates to a wide variety of advertising, marketing, promotion and publicity services. By their nature, such services necessarily include developing media strategy, the selection and placement of advertising/ad media, as well as the “preparation and realization of media and advertising plans and concepts.” Thus, within the broad categories set forth in the genus of services are services that are directly related to and encompassed by the advertising/ad media services identified by the evidence.

TTABlog comment: I had a hard time staying awake while reading this decision and writing this blog post. But advertising always has that effect on me.

Text Copyright John L. Welch 2012.


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