Wednesday, July 16, 2014

Precedential No. 32: TTAB Finds CLOUDTV Generic for ... Guess What?

The Board affirmed a refusal to register the purported mark CLOUDTV for software and software-based services relating to the provision of video-on-demand, finding the term to be generic. The Board also affirmed an alternative refusal on the ground of mere descriptiveness under Section 2(e)(1), concluding that applicant's proof of acquired distinctiveness was insufficient for this at least highly descriptive term. In re ActiveVideo Network, Inc., 111 USPQ2d 1582 (TTAB 2014) [precedential].

Applicant did not contest the examining attorney's contention that the term TV is generic for its goods and services, all of which involve streaming images to an electronic device having a screen. As to the word "cloud," the definitions submitted by the examining attorney demonstrated that the word "cloud," in the context of applicant's goods and services, will "immediately be seen as generic for packet-switched computer networks that link distant servers to one's TV, computer or other smart devices having screens." Applicant's own press releases and promotional materials repeatedly use the word "cloud" in reference to its products.

Applicant pointed to a number of third-party registrations for marks containing the word "cloud," but the examining attorney pointed out that those registrations presented "different circumstances on their face." In some the word "cloud" was disclaimed, while in others the marks were slogans (where disclaimers are not required). Moreover, the Board is not bound by decisions of trademark examining attorneys in other cases on other records. And, the Board noted, the rapidly changing nomenclature in this field requires that the USPTO have the freedom to consider meanings anew when appropriate.

Articles from trade publications discuss cloud TV's threat to traditional cable and satellite television, and the record demonstrated that the largest competitors in the entertainment business are involved in "cloud TV wars" as each adopts its own approach, based on applicant's proprietary technology.

Turning to the issue of genericness, applicant feebly argued that because it coined the term CLOUDTV, the term cannot be generic. The Board pointed out, however, that the first user is not entitled to register a generic term as a mark.

The Board found the genus of applicant's goods and services to be captured by various phrases, including "video on-demand," "interactive television," "streaming video online," and "cloud-based television programming services to Internet-connected TVs." The relevant consuming public consists of a very broad group of persons, from ordinary consumers to executives of multi-system operators.

The Board agreed with the examining attorney that the combination of the generic words CLOUD and TV is itself generic, since no new meaning beyond the individual meanings of the components is created by combining them. The compound term merely refers to a software platform for broadcasting multi-media content via video-on-demand.

In short, the examining attorney established by clear evidence that the wording "Cloud TV" is a compound term that names the "central focus" or "key aspect" of applicant's goods and services, and therefore CLOUDTV is a generic term.

Implicit in the Board's holding on genericness was a finding that CLOUDTV is at least merely descriptive of applicant's goods and services. The Board rejected applicant's contention that CLOUDTV is an imaginative play on words, instead finding that the term is highly descriptive.

As to applicant's claim of acquired distinctiveness, its evidence consisted of conclusory declarations from its Vice President of Marketing that recounted applicant's commercial success but failed to establish that the public views the term CLOUDTV as a source indicator. Applicant did not provide contextual information about its sales volume, such as market share, polling data, etc. The Board would "need to see a great deal more evidence (especially in the form of direct evidence from the relevant classes of purchasers that they view the term 'CloudTV' as a source-identifier, or other circumstantial evidence) than what Applicant has submitted."

And so the Board affirmed the genericness refusal, as well as the alternative mere descriptiveness refusal under Section 2(e)(1).

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Text Copyright John L. Welch 2014.


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