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
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