Friday, December 14, 2012

Widespread use of Video Downloader doesn't save inadequate specimen of use

OK, I like this because it's about widespread social practices that persist regardless of terms of service or even applicable law and that people are perfectly willing to make public; it has little other significance.

In re Rogowski, No. 77083475 (TTAB Dec. 11, 2012)

Rogowski filed an ITU for ACTIVE REASONER for “audio recordings featuring music.” After his notice of allowance issued, he submitted a specimen that was a photo of a YouTube page with his statement of use.


The examining attorney refused registration on the ground that the specimen failed to show the mark used in direct connection with the identified goods (audio recordings).  The TTAB affirmed.

The examining attorney reasoned that “a video recording is not necessarily an audio recording” because “the main purpose of a visual recording is to present visual content, whereas the main purpose of an audio recording is to provide audio content.” (I’m not so sure about that as applied to YT music, but the next reason is better.)  The examining attorney also found that the proposed mark as used on the specimen didn’t identify any tangible musical recording or downloadable audio recording, which were the goods identified in the applied-for class (International Class 9).  Rather, the mark as used in the specimen appeared to identify a “non-downloadable musical video performance” uploaded to and streamed on YouTube.  The specimen failed to indicate that the audio recording could be downloaded.

Applicant argued, with a strong basis in fact though not in YT’s terms of service, that

I, and many others have downloaded my music directly from YouTube. There are many computer programs available for free, on the internet, which enable the user to download music and video. I use Real Player. I apologize for assuming that everyone who uses computers would be aware of the ease of downloading. Being involved in the music industry has made me acutely aware of the music download phenomena….

The TTAB didn’t disagree with the claims about technology.  Rather, it relied on the requirements for a successful specimen.  This one showed the applied-for mark as the name of the channel/poster.  Viewers were invited to “Subscribe” or “Edit My Playlist” through buttons/links.  The mark also appeared accompanied by: “Here are my songs presented in the order they were released on YouTube.”  This specimen didn’t show trademark use for the identified goods.

It was dispositive that the specimen didn’t include a “download” or similar link “to put the consumer on notice that the identified goods (‘audio recordings featuring music’) are indeed available for download or the equivalent thereof.”  (People do this—they embed links to, e.g., Soundcloud or to a personal website in the notes; also if they’re on iTunes or Amazon a buy/download link may appear.)  To the TTAB, this was a failure similar to providing a webpage specimen that fails to show a means for ordering the specified goods or services, which the TTAB has previously held insufficient. Rogowski may intend viewers to use third party software to “record” the audio portions, but the specimen on its face failed to show use in commerce for the identified goods.

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