December 19, 2012

Trademark Denied; YouTube Clip Not Proper Specimen

In re Rogowski, 2012 ILRC 3251 (TTAB Dec. 11, 2012).

The TTAB affirmed a refusal to register a mark because a screen shot of a YouTube webpage that showed a trademark applicant playing music did not clearly indicate that the video could be downloaded, and thus the specimen failed to show that the mark was “used in commerce.”

As found by the TTAB:

The submitted specimen, however, does not show the required correspondence between the mark and the identified goods being offered for sale or transport in commerce. We acknowledge the advent and certainly the trend of music being offered in downloadable formats or the equivalent thereof in lieu of the traditional trade channels for tangible sound recordings, e.g., CDs being sold via retail or online stores. But we nonetheless find dispositive that applicant's specimen does not 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. We view this failing as being similar to on-line retailing situations in which a webpage specimen fails to show a means for ordering the goods or service. See, e.g., In re Osterberg, 83 USPQ2d 1220, 1224 (TTAB 2007) (webpage specimen did not directly provide a means for ordering applicant's goods); In re Genitope Corp. 78 USPQ2d 1819, 1822 (TTAB 2006) (same). Cf. In re Dell Inc., 71 USPQ2d 1725, 1727 (TTAB 2004) (website specimen for downloadable computer software acceptable when it includes method to download, purchase or order the software). See also, In re Sones, 590 F.3d 1282, 93 USPQ2d 1118, 1124 (Fed. Cir. 2009) (“Relevant factors include, for example, whether Sones’ webpages have a ‘point of sale nature….’”) (citation omitted).

We further acknowledge applicant's intent and his assertion that viewers of his uploaded videos on YouTube may use third party software such as RealPlayer to record the audio portions of the videos and ultimately transfer this music file to an MP3 player or other devices and formats. However, on the record before us, in the absence of a “download” link or the equivalent thereof, applicant's specimen on its face fails to show use of his mark in commerce for the identified goods

Sex Offender Violated New Hampshire Law In Registering For MySpace

New Hampshire v. White, 2012 ILRC 3223, 2012 WL 6062701, 2012 BL 321269 (N.H. Dec. 7, 2012).

Not the typical posting to this blog, but interesting in light of MySpace's historical reputation as a social media platform for bands and musicians.  A New Hampshire criminal court dismissed an indictment against the defendant for violating a state statute (RSA 651-B:4-a) that requires registered sex offenders to report to law enforcement the creation of an “online identifier.”  The Supreme Court of New Hampshire reversed and remanded, holding that a MySpace account includes “user profile information,” which, therefore, is an “online identifier” subject to the reporting requirement of the statute (RSA 651-B:4-a).

December 18, 2012

Satellite Radio Royalty Rate Hike Reported

Sirius XM reports in an EDGAR filing:

"On December 14, 2012, the Copyright Royalty Board, or CRB, of the Library of Congress issued its determination regarding the royalty rate payable by us under the statutory license covering the performance of sound recordings over our satellite digital audio radio service, and the making of ephemeral (server) copies in support of such performances, for the five-year period starting January 1, 2013 and ending on
December 31, 2017. Under the terms of the CRB’s decision, we will pay a royalty of 9.0% of gross revenues, subject to certain exclusions, for 2013, 9.5% for 2014, 10.0% for 2015, 10.5% for 2016, and 11% for 2017. The rate for 2012 is 8.0%."