Monday, June 06, 2016

Precedential No. 15: TTAB Rejects Specimens of Use for Radio Broadcast Services

The Board affirmed a refusal to register the mark WORLD’S BIGGEST SMALL GROUP for radio broadcasting services (in International Class 38}, finding that applicant's specimens of use failed to show that the phrase served as a source indicator for radio broadcasting services, as opposed to applicant's own radio program. In re WAY Media, Inc., 118 USPQ2d 1697 (TTAB 2016) [precedential].

A service mark specimen of use is acceptable if it either (1) shows the mark used or displayed as a service mark in the sale of the services, which includes use in the course of rendering or performing the services, or (2) shows the mark used or displayed as a service mark in advertising the services, which encompasses marketing and promotional materials. Here, applicant contended that its specimens of use satisfied both tests.

Applicant focused on four pages of material, including several Internet website pages referring to a radio program and YouTube screenshots that purportedly depicted the mark in a "radio broadcast booth environment." [See picture above]. The Board noted that the TMEP provides guidance as to the meaning of "radio broadcasting services:"

“Radio broadcasting services” (Class 38) would be an appropriate identification when a radio station uses a mark, such as call letters, to indicate the source of its broadcasting services generally. On the other hand, if an applicant is using the name of a weekly comedy television show as a mark, “television broadcasting services” would not be appropriate because the mark does not serve to identify and distinguish the electrical transmission of the program. Instead, the applicant should identify the services as “television entertainment services in the nature of an ongoing series of comedy programs” (Class 41).

Here, the Board found that the phrase WORLD’S BIGGEST SMALL GROUP, as it appears on the specimens, refers to applicant’s Bible-reading and devotion program. There was no direct association in the specimens between WORLD’S BIGGEST SMALL GROUP and radio broadcasting services. In short, "[n]othing on these pages demonstrates that consumers would perceive the phrase WORLD’S BIGGEST SMALL GROUP as a source indicator for radio broadcasting services."

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: The original application also included entertainment, e-mail newsletter services, and website-related services in International Class 41 and charitable outreach services in International Class 45. Those services were divided out and the divided application proceeded to registration, based upon the same specimens of use as in this case.

Text Copyright John L. Welch 2016.


At 11:15 AM, Blogger Unknown said...

Interesting - if it were a YouTube channel, would that be considered akin to a TV channel and constitute broadcasting services? Would that only count if the YouTube channel included content not just made by the owner but by independent contributors? I can think of a few channels like that.

At 12:00 PM, Anonymous Anonymous said...

One of the problems I have with PTO practice is the way they nitpick what a goods or services description is intended to cover. This is particularly an issue with ITU's. Since the actual service has not yet been rendered when it is time for the attorney to try to pick from the approved G&S list in order to take advantage of the best filing fee rate, and to avoid an office action, coupled with the fact that you cannot modify the G&S id to do anything that would seem to broaden their scope. If you have not foreseen exactly how the client is going to use the mark and chose the words with the interpretation that the PTO will give them, you wind up in a pickle like this applicant.

At 12:28 PM, Blogger John L. Welch said...

Your YouTube hypothetical sounds a bit like the recent FTD case. But if your channel allows third parties to post on the channel, maybe that would be "Internet broadcasting services."

At 3:00 PM, Anonymous Anonymous said...

Folks know quite well whether or not they are providing a service "for the benefit of others" particularly with respect general publishing of content - if it's your own content - it's not rendered for the benefit of others.

At 7:13 AM, Anonymous Anonymous said...

It is important to remember what you have control over, and not to conflate the provision of content with the provision of the transmission service.

To your hypothetical, John: If you have a YouTube channel, you have control over the content. But do you have any control over the quality of the transmission (i.e., the download speed, buffering, sampling rate, etc.)? The answer must be "no." YouTube controls all those things. And if you don't have control over the quality of the service (as opposed to the quality of the content), I don't think you have a mark.

At 10:28 AM, Blogger Unknown said...

John- yes I agree, having perused the decision I don't think applicant's specimen in any way depicted radio broadcasting services; my hypothetical would likely fall under internet broadcasting (I looked up a Youtube channel I was thinking of and lo- they had registered internet broadcasting services, so it's not impossible it seems). I wonder with regard to FTD - if it had been some sort of collective account (not sure if Twitter allows such a thing, seems likely not, but I can think of other blogging platforms where the platform isn't so conflated with the means of publication, where they might feature other content-providers' work, even another micro-blogging platform, Tumblr, allows it) if they might have had better success. But that's still publication/broadcasting, not "creating a community."*

Anon 7:13 - I don't think that's correct, because that's the difference between a broadcast channel (for example, let's say NBC or Lifetime, where various production companies might make the shows but the content is broadcast through the channel, etc) and an Internet Service Provider or the specific cable/satellite television provider. It's just that with radio there's some conflation it seems.

So a good radio specimen would be... well I suppose it should have been an advertisement that uses the mark and ideally mentions what radio channel to tune into . The Youtube screenshot at issue in the case didn't convey any information of the sort, unless I'm mistaken.

I wonder if part of the problem is that, as the internet becomes preferred over other forms of media transmission, there's an issue with technical services that normally had a very specific meaning for what the medium was (radio, records, "CC", why even "channel" on Youtube is a bit of a misnomer) where people may not always remember to qualify "internet-___" Especially what with podcasts being so similar to traditional talk radio, it's interesting to see how the manual will have to change over time.

Then again, the USPTO websites and Goods and Services Manual both appear to be going through some major growing pains right now so "interesting" might also likely be synonymous with "headaches for TM practitioners."

*One last thought re: "creating an on-line community" - I imagine a company that provides moderator services for social media platforms - seems something that might be in demand down the line as everyone's online presence increases and the need to tamp down on trolling and other community issues increases. Such a company should probably have a better specimen of use than just their Twitter though!

Cheers! -Gabriella


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