Wednesday, March 28, 2018

Precedential No. 9: TTAB Finds "SERIAL" Generic for Podcasts, But Logo Forms Registrable With Disclaimer

The Board affirmed a refusal to register the term SERIAL in standard character form, finding it to be generic for "entertainment in the nature of an ongoing audio program featuring investigative reporting, interviews, and documentary storytelling." However, the Board reversed refusals to register two design forms of the mark, shown below, finding that these two marks had acquired distinctiveness, but requiring a disclaimer of the word "SERIAL" in each mark. In re Serial Podcast, LLC, 126 USPQ2d 1061 (TTAB 2018) [precedential] (Opinion by Judge David K. Heasley].

SERIAL in standard characters: Applicant and Examining Attorney Colleen M. Dombrow agreed that the genus at issue is set forth in applicant's recitation of services. The relevant public, the Board found, consists of ordinary listeners of audio programs.

The Examining Attorney submitted dictionary definitions showing the "serial" means something that is published or broadcast in installments at regular intervals. The Board found that serial audio programs have long been "a staple of the airwaves" for decades, continuing to this day.

Applicant argued that use of the term "serial" as a noun is antiquated and archaic, and that the term in modern usage is an adjective describing a characteristic of audio programs. Thus "serial" is at most descriptive and it may acquire distinctiveness under Section 2(f). The Board, however, rejected the noun/adjective distinction, pointing out that both nouns and adjectives may be generic. See, for example, Sheetz of Del. Inc. v. Doctor's Assocs. Inc., 108 USPQ2d 1341, 1366 (TTAB 2013) (adjective "footlong" generic for sandwiches). Moreover, "serial" is used as a noun even today.

... Internet articles and websites of record show that the term “serial,” whether it is used as a noun or an adjective, refers categorically to ongoing audio programs - programs that may emanate from multiple sources, not just a single source. These examples of producers and commentators using the term to refer to a category of services is persuasive evidence that the term would be perceived by the relevant public, listeners of audio programs, as a generic designation of those services.

Applicant pointed to the frequent media references to the SERIAL podcast as demonstrating the term's source-identifying significance, but the Board was unmoved. It noted that media stories used capitalization, italics, quotation marks, or context to indicate that the "Serial" to which they referred was one particular serial. At the same time, other articles, website, and Internet stories used the term "serial" in a generic sense. The Board concluded that even though some articles refer to applicant's podcast by its name Serial, "that amounts, at most, to 'de facto secondary meaning' in a generic term," and does not entitle applicant to registration.

Turning to the alternative refusal on the ground of mere descriptiveness, the Board noted that applicant's claim to registration under Section 2(f) constituted an admission that the proposed mark is not inherently distinctive.

Because the applied-for mark is at best highly descriptive, "more substantial evidence" is required to establish acquired distinctiveness. The Examining Attorney acknowledged that applicant had "high sales figures in the form of number of downloads," but argued that these figures may demonstrate the commercial success of the services but not consumer recognition of the mark. The Board agreed.

[W]here the media coverage uses devices such as capitalization, italics, and quotation marks to designate Applicant’s program in particular, we do not think that Internet searches for the qualified phrase “podcast serial” and the number of downloads shows consumer acceptance of the source-indicating nature of the word SERIAL. In short, the evidence is insufficient to meet Applicant’s heavy burden of proving that that the word SERIAL, taken alone, has acquired distinctiveness under Section 2(f).

SERIAL in design form: The Board agreed with the Examining Attorney that the design elements in these two applied-for logo marks are not inherently distinctive, but the question was whether the composite logos, taken as a whole, have acquired distinctiveness. If so, the two design marks may be registered with a disclaimer of the word SERIAL.

Applicant's burden was heavy because the elements of the logo are common. Moreover, the word SERIAL is depicted in nondescript san serif capital letters with little stylization; the coloring of the letters does not generally render a mark distinctive; and the rectangular shape with rounded corners are common geometric shapes.

Nonetheless the Board found that the composite logos have achieved public recognition as source indicators for applicant's services. The evidence showed that others have copied and parodied the design elements of the logos, including Saturday Night Live and Sesame Street. The Board found these parodies to be "highly unusual and highly significant evidence," since a mark "has to be well known in the first place to be parodied." In addition, unauthorized copying by merchandisers "bears silent testament to public demand for articles bearing the logos."

The Board ruled that, based on the unique evidence in this case, that applicant had proven acquired distinctiveness for the composite logo marks.

Conclusion: The Board affirmed the genericness refusal as to the standard character mark SERIAL, but it reversed that refusal as to the two logo marks. Furthermore, the refusals of the logo marks based on mere descriptiveness are reversed, provided that applicant disclaims the word SERIAL in each mark.

Read comments and post your comment here.

TTABlog comment: Did the Board put the cart before the horse in deeming the term SERIAL to be generic before considering the "mixed evidence" of usage?

Text Copyright John L. Welch 2018.


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