Rural Media Group, Inc.

Trademark Trial and Appeal BoardSep 13, 2012

No. 85042584 (T.T.A.B. Sep. 13, 2012)

THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Mailed: September 13, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Rural Media Group, Inc. ________ Serial Nos. 85042534 and 850425841 _______ Jennifer L. Elgin of Wiley Rein LLP for Rural Media Group, Inc. Jaclyn Kidwell Walker, Trademark Examining Attorney, Law Office 112 (Angela Bishop Wilson, Managing Attorney). _______ Before Quinn, Cataldo and Greenbaum, Administrative Trademark Judges. Opinion by Cataldo, Administrative Trademark Judge: Applicant, Rural Media Group, Inc., has filed applications to register as trademarks on the Principal Register the mark RFD TV THE THEATRE (in standard characters) and the mark displayed below 1 Because the appeals in both cases involve common issues of law and fact, we will determine both in this decision. Ser. Nos. 85042534 and 85042584 2 both reciting “entertainment in the nature of theater productions” in International Class 41.2 The examining attorney required applicant to disclaim the wording “TV” and “THE THEATRE” in both applications, pursuant to Section 6(a) of the Trademark Act, 15 U.S.C. §1056(a), on the ground that such wording is merely descriptive of applicant’s services within the meaning of Section 2(e)(1) of the Trademark Act, 15 U.S.C. 1052(e)(1). In response, applicant disclaimed “THE THEATRE” but not “TV” in both cases. When the requirement for a disclaimer of “TV” was made final, applicant appealed. In each application, applicant and the examining attorney filed main briefs on the issue under appeal, and applicant filed a reply brief. 2 Application Serial Nos. 85042534 and 85042584 both were filed on May 19, 2010 asserting March 2007 as a date of first use of the marks anywhere and in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a). In application Serial No. 85042584, applicant states as follows: “Color is not claimed as a feature of the mark.” “The mark consists of a stylized RFD TV (a windmill with a circle) The Theatre.” Ser. Nos. 85042534 and 85042584 3 We reverse the refusal of registration in the absence of a disclaimer of “TV” in each application. An examining attorney may require an applicant to disclaim an unregistrable component of a mark otherwise registrable. Trademark Act Section 6(a). Merely descriptive terms are unregistrable, under Trademark Act Section 2(e)(1) and, therefore, are subject to disclaimer if the mark is otherwise registrable. Failure to comply with a disclaimer requirement is a ground for refusal of registration. See In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Richardson Ink Co., 511 F.2d 559, 185 USPQ 46 (CCPA 1975); In re Ginc UK Ltd., 90 USPQ2d 1472 (TTAB 2007); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977); and In re Pendleton Tool Industries, Inc., 157 USPQ 114 (TTAB 1968). A term is deemed to be merely descriptive of goods or services, within the meaning of Section 2(e)(1), if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services. See, e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978). A term need not immediately convey an idea of each and every specific feature of the applicant’s goods or services Ser. Nos. 85042534 and 85042584 4 in order to be considered merely descriptive; it is enough that the term describes one significant attribute, function or property of the goods or services. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); and In re MBAssociates, 180 USPQ 338 (TTAB 1973). In this case, the examining attorney argues that “TV” merely describes the services because applicant owns a television network (RFD-TV) and applicant’s “theater productions are broadcast over applicant’s network and the theatre productions are also in fact televised.”3 The examining attorney further argues that “the term ‘TV’ is also descriptive of the entertainment services in that they feature special appearances by RFD-TV stars.”4 In support of her position, the examining attorney relies upon the following evidence: “a dictionary definition, applicant’s specimen of record, and a copy of applicant’s program guide and print outs from applicant’s website.”5 According to the dictionary definition submitted by the examining attorney, “television” is defined as: (abbreviation TV) - an electronic system that is used to convert moving images and sound into electrical signals, which are then transmitted by radio 3 Examining attorney’s brief, unnumbered page 6. 4 Id. 5 Id. at 5. Ser. Nos. 85042534 and 85042584 5 waves or by cable to a distant receiver that converts the signals back to images and sound; - (also television set) a device with a picture tube and loudspeakers that is used to receive picture and sound signals transmitted in this way; - television broadcasting in general.6 Perusal of applicant’s specimen of record (reproduced below) reveals that applicant utilizes several RFD TV- formative marks, including RFD TV RURAL AMERICA’S MOST IMPORTANT NETWORK and design; RFD HD and design; RFD TV THE MAGAZINE and design, and the marks at issue herein. Applicant’s internet program guide and other pages from its internet website made of record by the examining attorney corroborate that applicant operates a television station under the mark RFD TV RURAL AMERICA’S MOST IMPORTANT NETWORK and design, featuring programming directed toward rural America such as “Hee Haw,” “This Week in Agribusiness,” “Farmers Almanac TV,” “National Tractor Pulling,” “The Marty Stuart Show,” and “Roy Rogers Happy Trails Theatre.” Certain of these programs are available in high definition, and presumably may be viewed on applicant’s RFD HD channel. The marks at issue herein are used in connection with theater productions performed at applicant’s theater located in Branson, Missouri. 6 Chambers 21st Century Dictionary, retrieved from credoreference.com. Ser. Nos. 85042534 and 85042584 6 Ser. Nos. 85042534 and 85042584 7 In support of registrability of its marks without a disclaimer of “TV,” applicant submitted the following definition of television: “the image, sound, or content of a combined audio and video broadcast.”7 Applicant argues that “TV” does not merely describe an ingredient, quality or characteristic of its services, “as there is no ‘combined audio and video broadcast’ inherent in live ‘theater productions.’”8 Applicant further argues that any connection between “TV” and its services “is not immediate and would require mature thought and multi-stage reasoning.”9 Applicant argues in addition that the mere fact that entertainers who have appeared on television may also perform in its theaters “is certainly far-flung, and would take multi-step reasoning by a consumer of Applicant’s services”10 to conclude that “TV” merely describes such services. Based on the record before us, we find that relevant purchasers will not perceive the term “TV” in applicant’s marks as merely describing applicant’s “entertainment in the nature of theater productions.” First, the evidence of record clearly indicates that applicant operates a 7 Encarta.msn.com. 8 Applicant’s brief, p. 3. 9 Id. 10 Id. at 4. Ser. Nos. 85042534 and 85042584 8 television network directed toward the rural market, and is adding a high definition channel as well. Thus, there is no question that applicant broadcasts entertainment on television. The evidence of record further makes clear that the marks at issue herein are used in connection with theater productions performed live at applicant’s theater located in Branson, Missouri, and not television broadcasting or programming services. Applicant and the examining attorney appear to agree on these points. Based upon the above definitions, there is nothing inherent in the term “TV” or “television” that merely describes a function, feature or characteristic of the recited services. So the definitions themselves do not support the requirement. Turning to applicant’s specimen and informational pages from its internet web site, we find insufficient support for the examining attorney’s contention that applicant’s live theater productions are broadcast on applicant’s television station(s). That is to say, the programs appearing at applicant’s theater do not appear to be the same as the programs aired by applicant on television. The program “Roy Rogers Happy Trails Theater” noted by the examining attorney appears to be a television program, notwithstanding the presence of “Theater” in its Ser. Nos. 85042534 and 85042584 9 title, and in any event there is no evidence that this program is a theater production appearing at applicant’s theater under the marks at issue. Simply put, the evidence relied upon by the examining attorney does not appear to support her position that applicant airs the live theater productions under the involved marks on television such that “TV” describes a feature or characteristic thereof. The mere fact that applicant’s specimen and web site display marks used in connection with both applicant’s television station(s) and its theater productions does not permit us to infer that they share common programming or otherwise conflate such programming. Moreover, the examining attorney fails to cite authority for her position that because certain performers (e.g., Marty Stuart) appear on applicant’s television programming and also appear live at applicant’s theater, the term “TV” is descriptive of a feature or characteristic of its theater productions. As noted above, the evidence of record does not support a finding that the live performances at applicant’s theater are broadcast on its television station(s), and the fact that some performers may appear on both does not support the requirement for a disclaimer of “TV.” Ser. Nos. 85042534 and 85042584 10 In summary, we find that based upon the evidence of record, the examining attorney has failed to make a prima facie showing that “TV” merely describes a function, feature or characteristic of applicant’s “entertainment in the nature of theater productions” such that applicant must disclaim the term as it appears in its involved marks. Decision: The refusal to register is reversed in each case.