Band's Shut-Down Facebook Page Not A "Use In Commerce"; Injunction Vacated

Emerald City Mgmt., LLC v. Kahn, No. 15-40446 (5th Cir. Mar. 8, 2016) [decision].


The Fifth Circuit vacated a preliminary injunction ordering the leader of a band called "Downtown Fever" to transfer control of a Facebook account to the band's manager who had registered the mark "Downtown Fever."  The lower court had issued an injunction barring defendant from using the band name, and the defendant thereafter voluntarily de-activated the band's Facebook page.  Then, the lower court found that the plaintiff should be granted an injunction ordering the defendant to give control of the Facebook page.  However, the appeals court found that was an abuse of discretion because "neither shutting down a Facebook account nor blocking administrator access to a Facebook account constitutes 'use in commerce' of a trademark.  Because the Facebook page was not accessible to anyone, the defendant was not using the trademark.

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