In re Serial Podcast, LLC
| Decision Date | 26 March 2018 |
| Docket Number | 86454420,86454424,86464485 |
| Parties | In re Serial Podcast, LLC |
| Court | Trademark Trial and Appeal Board |
Hearing: July 12, 2017
Matthew T. Furton, Sean C. Fifield, and David T. Van Der Laan of Locke Lord LLP, for Serial Podcast, LLC.
Colleen M. Dombrow, Trademark Examining Attorney, Law Office 101, Ronald R. Sussman, Managing Attorney.
Before Taylor, Shaw and Heasley, Administrative Trademark Judges.
Serial Podcast, LLC ("Applicant") seeks registration on the Principal Register of three marks:
SERIAL (in standard characters);[1]
SERIAL (word and design);[2] and
SERIAL (word and design).[3]
All three marks are for "entertainment in the nature of an ongoing audio program featuring investigative reporting, interviews, and documentary storytelling" in International Class 41.
The Examining Attorney has refused registration of all three marks on the grounds that each is generic for the identified services, or, if not generic, merely descriptive of the services. 15 U.S.C. §§ 1051, 1052(e)(1), 1053, and 1127. In each case, Applicant has responded that the mark is not generic, and has acquired distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f). The Examining Attorney has nonetheless maintained the genericness refusals and has found Applicant's evidence insufficient to prove acquired distinctiveness. When the refusals were made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the requests for reconsideration, the appeals resumed and were consolidated.[4] Applicant and the Examining Attorney submitted briefs, and appeared at an oral hearing before the Board.
The Examining Attorney maintains that the proposed standard character mark, SERIAL, is generic for the services recited in the application. Applicant maintains that the proposed mark is not generic, but descriptive, and has acquired distinctiveness under Section 2(f), which states that "nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of applicant's goods [or services] in commerce." 15 U.S.C. §§ 1052(f), 1053.
"A generic term is the common descriptive name of a class of goods or services." In re Cordua Rests., Inc., 823 F.3d 594, 118 U.S.P.Q.2d 1632, 1634 (Fed. Cir. 2016) (quoting Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114 U.S.P.Q.2d 1827, 1830 (Fed. Cir. 2015) and H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986) (internal punctuation omitted)). Generic terms are "the ultimate in descriptiveness." Marvin Ginn, 228 U.S.P.Q. at 530, quoted in In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 U.S.P.Q.2d 1262, 1264 (Fed. Cir. 2015). They are not registrable because "[g]eneric terms, by definition incapable of indicating source, are the antithesis of trademarks, and can never attain trademark status." In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 4 U.S.P.Q.2d 1141, 1142 (Fed. Cir. 1987), quoted in Cordua, 118 U.S.P.Q.2d at 1634.
"The critical issue in genericness cases is whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods or services in question." Marvin Ginn, 228 U.S.P.Q. at 530, quoted in Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d 1374, 123 U.S.P.Q.2d 1411, 1413 (Fed. Cir. 2017). Making this determination Marvin Ginn, 228 U.S.P.Q. at 530; see Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 U.S.P.Q.2d 1477, 1483 (TTAB 2017). The Examining Attorney must establish with clear and convincing evidence that a proposed mark is generic. Cordua, 118 U.S.P.Q.2d at 1635.
The Examining Attorney and Applicant concur that the genus in this case is set forth by the recitation of services in each subject application: "entertainment in the nature of an ongoing audio program featuring investigative reporting, interviews, and documentary storytelling." See generally Cordua, 118 U.S.P.Q.2d at 1636; Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 U.S.P.Q.2d 1551, 1552 (Fed. Cir. 1991) (). The relevant public consists of ordinary listeners of audio programs.[5] Evidence of the relevant public's understanding of a term may be obtained from any competent source, including testimony, surveys, dictionaries, trade journals, newspapers and other publications. See Cordua, 118 U.S.P.Q.2d at 1634.
The Examining Attorney has adduced dictionary definitions showing that the word "SERIAL" means something that is published or broadcast in installments at regular intervals, e.g.:
Applicant produces an ongoing audio program, a podcast[7] appearing in regular weekly installments. According to its website:
Serial tells one story - a true story - over the course of an entire season. Each season, we'll follow a plot and characters wherever they take us. And we won't know what happens at the end until we get there, not long before you get there with us. Each week we bring you the next chapter in the story, so it's important to listen to the episodes in order, starting with Episode 1.[8]
According to Applicant's manager and editorial adviser, Ira Glass, "The first season of the podcast ran for over two months, with a total of twelve episodes premiering on October 3, 2014 and concluding on December 18, 2014."[9] Applicant's Business Operations Manager, Elise Bergerson, echoed this description of Applicant's episodic program.[10] According to Forbes magazine, "Serial is a season-based podcast where a single story is discussed in detail over a dozen (or so) episodes."[11] According to the Examining Attorney, Applicant's sequential, episodic podcasts meet the dictionary definition of a serial: "the applicant's audio program is a serial in that it is broadcast in separate parts over a period of time."[12]
The genus of "ongoing audio program" in Applicant's identification of services encompasses both podcasts and radio broadcasts. As a Cincinnati Enquirer article put it, "Podcasts are reviving a declining radio art form―the serial, fictional or documentary, with a compelling story and characters so vivid you can almost see them."[13] The serial has long been a staple of the radio waves. There was, for example:
(Image Omitted)[14]
Some popular television programs, like the Lone Ranger, began as radio serials:
(Image Omitted)[15]
Another example is Sky King:
(Image Omitted)[16]
The tradition of radio serials continued through the decades. For example:, (Image Omitted)[17]
And the tradition of radio serials continues to this day.[18]
Applicant argues that the Examining Attorney did not meet her burden of proving that SERIAL is a term that the relevant purchasing public understands primarily as the common name for ongoing audio programs. The references using the term "serial" as a noun are antiquated and archaic, Applicant contends, "referring to decades-old entertainment genres that are unlikely to affect the relevant public's primary perception of the term in the podcast era."[19] Applicant appends a table containing examples of these assertedly antiquated uses from the record:
Quote
Generic Term
"Radio's most popular and longest running national serial was One Man's Family ..." www.otrr.org (emphasis added). February 10, 2015 Office Action, TSDR p. 18.
"Airing over WJR, the radio serial featured the exploits of Scoop, played by Kasem. and his grandfather as they traveled the world in search of stories for the town newspaper." www.detroitkidshow.com (emphasis added). February 10, 2015 Office Action, TSDR p. 37.
1940s
..." www.sergeanpreston.com (emphasis added). September 1. 2015 Office Action, TSDR p. 22.
"Regional authors also tend to be popular and Philip Solem recently published a story that he originally wrote and read as a serial on radio KAXE in the late 1980s." Rend to Keep Your Brain Active. The Journal. February 16. 2016 (emphasis added). March 22, 2016 Office Action. TSDR p. 1.
1980s
"1981 . . . Star Wars is adapted for American public radio, as a 13-episode serial." Idato. Michael, Star Wars Year by Year, The Age. December 11. 2015 (emphasis added). March 22. 2016 Office Action, TSDR p. 1.
search.credoreference.com (emphasis added). March 22, 2016 Office Action. TSDR p. 19.
"The English detective-novelist created by Francis Durbridge for the radio serial Send for Paid Temple (1938) and its many sequels broadcast over the next 30 years." search.credoreference.com (emphasis added)....
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