Thursday, July 27, 2017

SOUND STREAM (Stylized) Merely Descriptive of Digital Music Delivery, Says TTAB

Pro se applicant Jeremy Southgate's application to register the mark SOUND STREAM in the special form shown below, for digital music services, fell on deaf ears at the TTAB. The Board affirmed a Section 2(e)(1) mere descriptiveness refusal, and finding "no additional inherently distinctive element present in the mark." In re Jeremy C. Southgate, Serial No. 86537663 (July 14, 2017) [not precedential] (Opinion by Judge Thomas W. Wellington).

Examining Attorney Andrea Hack submitted a definition of the term "streaming sound" ("sound that is played when it arrives), as well as evidence of third-party use "streaming sound" in connection with "delivery of digital music by electronic transmission" (quoting applicant's recitation of services). The Board concluded that the record "overwhelmingly shows the merely descriptive nature of the wording.

Consumers, viewing the mark in the context of services that involve the electronic transmission of digital music, will immediately understand the term SOUND STREAM as describing the purpose or precise nature of those services. Although the component terms are usually verbalized in opposite order, i.e., one can stream music or stream sound, there is no doubt that SOUND STREAM is the combination of two merely descriptive terms in relation to the services, and the composite has no other non-descriptive meaning.

There remained the issue of whether the stylization and coloring of the applied-for mark "creates a separate and inherently distinctive commercial impression apart from the words themselves, such that the mark as a whole is not merely descriptive."

Applicant pointed the slight alliteration in its mark, as well as on the color features of the proposed mark. Applicant also argued that the term STREAM connotes a "stream of water," a connotation that is "readily apparent" from the coloring of the letters:

(a) “STREAM” connotes a river, creek, or continuous flow of a *tangible* substance such as water or air, which is not descriptive of *intangible* services like delivery of digital music by electronic transmission or provision of information via global computer networks. Such an understanding of *tangible*, distinctive "stream" is readily apparent from (b) the applied-for Mark's unique highlighting of vowels (“OU", "EA") and consonants (“S”, “ND”, “STR”, “M”), for speech consists of a continuous flow of air (and air is a *tangible* substance) from the lungs, vowels, which are disrupted by a closed-mouth, consonants -- but, the letter “S”, although a closed-mouth consonant, is analogous to a vowel in the respect that it consists of a somewhat open, unimpeded, continuous flow of air via a “hiss” or sibilance; hence, its design is special

The Board was not impressed. "While it is evident that Applicant has given considerable thought into his selection of colors, we cannot agree that the "design is special.'"

Rather, consumers are likely to perceive the colored letters as an arbitrary and simplistic choice of colors intended to be merely ornamental. Ultimately, we find that the color selection in the applied-for mark fails to create a separate commercial impression.

Applicant's argument that the term STREAM may conjure a stream of water was "implausible" when considered in the context of Applicant’s services.

Here, Applicant's presentation of its mark is in an unremarkable font style. The only feature not entirely ordinary about the presentation of the terms SOUND STREAM is the fact that they are shown in three different, albeit fairly common, primary colors – yellow, red and blue. As discussed, the color of each letter would appear to consumers as arbitrary and merely ornamental. We do not conclude that this feature creates such an impression that it would convert the merely descriptive, non-registrable term into an inherently distinctive one.

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Any thoughts?

Text Copyright John L. Welch 2017.


At 9:24 AM, Anonymous Anonymous said...


At 9:24 AM, Anonymous Anonymous said...

I think one could find that SOUND STREAM is a unitary phrase and is at least highly suggestive. I don't agree with this decision.

At 11:26 AM, Blogger RT said...

Interesting use of "arbitrary" in its non-Abercrombie sense.

At 6:43 PM, Anonymous Anonymous said...

Am I the only one who finds the "ornamental" language here puzzling? I thought an ornamental refusal related to a particular specimen, not to the mark itself. Isn't every logo design ornamental?

The PTO's guide on overcoming an ornamental refusal says: "An ornamental refusal is when the USPTO refuses registration of your mark because the sample of how you actually use the applied-for mark (the "specimen") or other information in the record shows use of your mark merely as an ornamental or decorative feature on the goods and not as a trademark to indicate the source of the goods." And TMEP 1202.03 says that normally ornamentation refusals apply to trademarks not to service marks, so how does this concept even apply to a class 38 application?


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