The Playtone Co.

Trademark Trial and Appeal Board

Apr 16, 2004

No. 75980911 (T.T.A.B. Apr. 16, 2004)

Mailed: April 16, 2004
Paper No. 24
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re The Playtone Company
________
Serial No. 75980911
_______
Anthony M. Keats of Keats McFarland & Wilson LLP for The Playtone
Company.
Hanna Fisher, Trademark Examining Attorney, Law Office 111 (Craig
Taylor, Managing Attorney).
_______
Before Hohein, Walters and Holtzman, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
The Playtone Company has filed an application to
register the term "PLAYTONE" as a trademark for "printed matter,
namely, posters."1
1 Ser. No. 75980911, filed on June 22, 1998 as, initially, a part of
Ser. No. 75506099, in which registration was sought on the basis of an
allegation of a bona fide intention to use such term in commerce.
Following issuance of a notice of allowance in connection with the
parent application on September 28, 1999, applicant on June 1, 2000
submitted a petition to revive, a request for an extension of time to
file a statement of use, and a request to divide, each of which was
subsequently granted, and a statement of use setting forth June 1,
1999 as the date of first use anywhere and in commerce with respect to
the goods in the child application, namely, posters. Thereafter, with
the submission of a substitute specimen of use, applicant filed a
verified amendment setting forth February 2002 as the date of first
use anywhere and in commerce for such goods.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75980911
2
Registration has been finally refused, apparently under
Sections 1(d)(1) and 45 of the Trademark Act, 15 U.S.C. §§
1051(d)(1) and 1127, on the ground that as used on the specimens,
the term "PLAYTONE" designates services and therefore does not
function as a trademark for applicant's goods. Registration has
also been finally refused under Section 1(d)(1) of the Trademark
Act, 15 U.S.C. § 1051(d)(1), on the basis that such term had not
been used in commerce by the time the statement of use was due.2
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusals to
register.
The various specimens filed in connection with the
application appear to be photocopier reproductions of facsimiles
of posters used to advertise various movies. Each of the first
two of such specimens, however, were found to be "unacceptable as
evidence of actual trademark use because it is indistinct and the
mark cannot be seen." The two photographs submitted in response
to the Examining Attorney's requirement for substitute specimens
were found unacceptable because the posters shown therein display
the designation "IMAGEMOVERS/PLAYTONE" instead of the term
"PLAYTONE." In response to the continued requirement for
substitute specimens, copies of the facsimile reproduced below,
2 The grounds are succinctly stated in the final refusal as follows:
The requirements for acceptable specimens and use
dates are made FINAL for the reasons set forth in earlier
correspondence. Applicant apparently continues to file
posters advertising its movie production services. The
wording sought to be registered, PLAYTONE, designates
services rather than posters.
Ser. No. 75980911
3
which constitute the substitute specimens at issue herein, were
furnished:
Although perhaps difficult to discern in the above, the term
"PLAYTONE" appears as part of the phrase "A PLAYTONE PICTURE" on
Ser. No. 75980911
4
the right-hand portion of the first of the six lines of text at
the bottom of the "MY BIG FAT GREEK WEDDING" movie poster.3
Applicant, while conceding in its brief that it "could
find no case presenting exactly the same facts as presented in
this application," nonetheless argues that "controlling law has
held that under analogous circumstances [an] Applicant's marks
should be approved for registration." Specifically, citing and
principally relying on In re Polar Music International AB, 714
F.2d 1567, 221 USPQ 315 (Fed. Cir. 1983),4 as well as referring
to In re Cooper, 254 F.2d 611, 117 USPQ 396 (CCPA 1958)5 and In
3 While such poster also shows, on the left-hand side of the fifth line
from the bottom and just above the expression "YAHOO!," the words
"PLAY" and "TONE" depicted within a circle and separated by a dot or a
dash, the sole use of the term "PLAYTONE" is as part of the phrase "A
PLAYTONE PRODUCTION" as noted above.
4 Among other things, such case held in a two-to-one decision that the
name of the musical group "ABBA" was registrable as a trademark for
sound recordings containing musical performances by the group because
the evidence established that the term "ABBA" indicated not just the
source of the performances but a source of the records and tapes and
the sound recorded thereon. 221 USPQ at 318. The court stated, in
this regard, that while "just showing the name of the recording group
on a record will not by itself enable that name to be registered as a
trademark," in instances "[w]here, however, the owner of the mark
controls the quality of the goods, and where the name of that
recording group has been used numerous times on different records and
has therefore come to represent an assurance of quality to the public,
the name may be registered as a trademark since it functions as one."
Id.
5 The court therein held that the title of a single book, even if
arbitrary, is not registrable as a trademark for books because, in
essence, a book's title is considered to be nothing more than the name
by which the book may be identified and thus is "descriptive" thereof
in much the same way that other items of merchandise are identified.
117 USPQ at 398-400. Nonetheless, in dictum, the court also noted
that the title of a series of books may be registrable as a trademark
therefor where "[t]he name of the series is not descriptive of any one
book and each book has its individual name or title." 117 USPQ at
400.
Ser. No. 75980911
5
re First National City Bank, 168 USPQ 180 (TTAB 1970),6 applicant
maintains that while the poster for the movie "MY BIG FAT GREEK
WEDDING" "is also used as a point of purchase display in order to
advertise Applicant's goods in video rental stores," "such
posters are sold separately as collector's items and the poster
image is identical to the image on video disks and soundtrack
CDs." In view thereof, and further asserting that, because the
"mark PLAYTONE does not stand for any of the actors' names or the
title of any film Applicant has produced," the "mark is arbitrary
and is properly being used as a trademark to indicate Applicant
as the source of origin of its films and posters advertising such
films," applicant contends that (footnote omitted):
[J]ust as the Federal Circuit [in Polar
Music] held that the ABBA mark was not simply
being used to identify "the artist performing
on the record rather than the source or
origin of the goods," Applicant's mark
PLAYTONE is being used to indicate Applicant
as the source of origin of the goods rather
than simply advertising the film or the
artists performing in the film.
In addition, applicant urges that (emphasis by the
court):7
6 The Board in such case held that the title of a series of annually
distributed record albums may be registered as a trademark for the
series. 168 USPQ at 181.
7 Applicant also insists that its "position is further analogous to
Polar Music because Applicant exercises control over the quality of
its products and ... has the right to exercise control over the
quality of posters bearing Applicant's mark." With respect thereto,
applicant contends that it "releases its films in the United States
via distribution agreements with film studios" and "maintains
licensing agreements with distribution companies and poster producers
to ensure the quality of the posters bearing Applicant's PLAYTONE
trademark." It is noted, however, that unlike the present appeal, the
record in Polar Music contained a portion of an agreement licensing
the mark at issue to a record company and requiring "appellant to
produce and deliver ... master recordings embodying the performances"
of the musical group. 221 USPQ at 316. The court, in particular,
Ser. No. 75980911
6
[I]n Polar Music the Federal Circuit
found that because the applicant [therein]
had used the ABBA mark in connection with a
series of musical titles, such use was
"determinative that 'ABBA' functions as a
trademark and is not just an identification
of the singers ... [given that] the title to
a series of records or books is able to
function as and be registered as a
trademark." Polar Music , ... [221 U.S.P.Q.
at 318] (citing In re Cooper, ... 117
U.S.P.Q. 396, 400 (1958); [and] In re First
Nat'l City Bank, 168 U.S.P.Q. 180 (TTAB
1970)). ... Applicant is similarly using its
PLAYTONE mark to indicate itself as the
source of ... its series of films "My Big Fat
Greek Wedding," "Cast Away," and "Catch Me if
You Can," and its Home Box Office miniseries
"From Earth to the Moon." Therefore,
Applicant's use is analogous to Polar Music
and should be approved for registration.
We concur with the Examining Attorney, however, that as
stated in her brief, "the record does not demonstrate that
PLAYTONE would be perceived by readers as designating the source
of posters." Clearly, as shown by the specimen reproduced
previously, applicant is not analogously using the term
"PLAYTONE" as either the title of a series of motion picture
posters or as the name of a group of actors who perform in the
various movies that its posters advertise, such that consumers
would regard applicant's goods as "PLAYTONE" posters. Rather, as
pointed out that, "[b]y express provisions of the license, appellant
controls the nature and quality of the goods"; that the recording
company "recognizes appellant's ownership" of appellant's mark; and
that, under the agreement, the appellant "is solely responsible for
all recording costs incurred in the production of the masters, and is
solely responsible for paying the artists and all others in respect of
sales of recordings derived from the masters." Id. By contrast,
there simply is no support in the record for applicant's insistence
that it "has thoughtfully and properly exercised control over the
nature and quality of Applicant's good and services through licensing
agreements, production contracts and Applicant's direct supervision."
Ser. No. 75980911
7
the Examining Attorney accurately observes with respect to the
"My Big Fat Greek Wedding" poster:
The first line of text at the lower edge ...
reads: Gold Circle Films presents in
association with Home Box Office and MPH
Entertainment a Playtone Picture "My Big Fat
Greek Wedding". The next three lines contain
the names of actors and actresses. ....
Section 45 of the Trademark Act, 15 U.S.C. §1127,
defines a "trademark" as "any word, name, symbol, or device, or
any combination thereof," which serves "to identify and
distinguish [a person's] ... goods ... from those manufactured or
sold by others and to indicate the source of the goods, even if
that source is unknown." It is well settled, however, that not
all words, designs or symbols used in the sale or advertising of
goods function as trademarks, regardless of an applicant’s intent
that they do so. 1 J. McCarthy, McCarthy on Trademarks & Unfair
Competition, Section 3:3 (4th ed. 2004). Rather, in order to be
protected as a valid mark, a designation must create "a separate
and distinct commercial impression, which thereby performs the
trademark function of identifying the source of the goods to the
customers." In re Chemical Dynamics, Inc., 839 F.2d 1569, 5
USPQ2d 1828, 1829-30 (Fed. Cir. 1988). A term or name does not
function as a trademark unless it is used in a manner which
projects to purchasers a single source of the goods. In re
Morganroth, 208 USPQ 284, 287 (TTAB 1980). Thus, as set forth in
In re Bose Corp., 546 F.2d 893, 192 USPQ 213, 215-16 (CCPA 1976)
(italics in original; citations and footnote omitted):
The Trademark Act is not an act to
register mere words, but rather to register
trademarks. Before there can be
Ser. No. 75980911
8
registration, there must be a trademark, and
unless words have been so used they cannot
qualify. ....
An important function of specimens in a
trademark application is ... to enable the
PTO to verify the statements made in the
application regarding trademark use. In this
regard, the manner in which an applicant has
employed the asserted mark, as evidenced by
the specimens of record, must be carefully
considered in determining whether the
asserted mark has been used as a trademark
with respect to the goods named in the
application. ....
As used on the specimen at issue herein, the term
"PLAYTONE" does not create a separate and distinct commercial
impression which performs the trademark function of identifying
the source of applicant's posters. Aside from the fact that such
term is buried within a line of text at the bottom portion of the
poster shown by the specimen and thus is not used in a manner
calculated to project to consumers and prospective purchasers of
posters an indication of the source or origin of such goods, it
is also the case that, even if noticed, the term "PLAYTONE" still
does not function as a mark which identifies and distinguishes
the source or origin of applicant's posters. The reason therefor
is that such term, as noted previously, appears in the specimen
as part of the phrase "A PLAYTONE PICTURE." As so used, the term
"PLAYTONE" plainly refers to the name of an entity which acted as
the producer of the motion picture "MY BIG FAT GREEK WEDDING"
which is being advertised in the poster rather than serving as an
indicator of a single source or origin of the poster itself.
Accordingly, because the term "PLAYTONE" is not used in the
specimen in a manner which projects to consumers and prospective
Ser. No. 75980911
9
purchasers a single source of the goods for which registration is
sought, it does not function as a trademark for posters.
Turning to the refusal on the ground that the term
"PLAYTONE" had not been used in commerce by the time the
statement of use was due, TMEP Section 1109.09(a) (3d ed. 2d rev.
May 2003) provides in relevant part that:
The dates of use can be supplied after
expiration of the statutory filing period;
however, the applicant must make valid use of
the mark in commerce on or in connection with
all the goods/services in the application
before the expiration of the time for filing
the statement of use. 37 C.F.R. §2.71(c)(2).
If the applicant attempts to amend the dates
of use to state a date of first use in
commerce that is later than the time
permitted for filing the statement of use,
the examining attorney must refuse
registration because the applicant failed to
make use within the time permitted, and hold
the application abandoned. ....
Since, in the present case, a notice of allowance issued in
connection with applicant's parent application on September 28,
1999, applicant had until September 28, 2000 to submit a
statement of use in connection with the instant application,
which is its child application, given that applicant requested
and was granted with respect to the latter a six-month extension
of time for filing its statement of use. Consequently, while
applicant timely filed a statement of use on June 1, 2000 which
set forth June 1, 1999 as the date of first use anywhere and in
commerce with respect to the goods, namely, posters, in its child
application, it subsequently filed, with the submission of a
substitute specimen of use, a verified amendment on or about
Ser. No. 75980911
10
March 5, 20028 setting forth February 2002 as the date of first
use anywhere and in commerce for such goods. Registration was
accordingly refused inasmuch as applicant's verified amended date
of first use of February 2002 is plainly later than the date by
which applicant was required to make valid use of the term
"PLAYTONE" as a mark in commerce on or in connection with
posters, which was the September 28, 2000 expiration date for
filing the statement of use. See Trademark Rule 2.71(c)(2).
Applicant, in its brief, asserts that it "respectfully
disagrees with the merit of" the Examining Attorney's argument,
which it insists "is likely the result of a procedural error,"
that it had not made use of the term "PLAYTONE" as a mark in
commerce for its posters prior to the time for filing its
statement of use in connection therewith. However, rather than
filing a verified amendment to set forth a date of first use
anywhere and in commerce, such as the June 1, 1999 date set forth
in the statement of use it filed on June 1, 2000, which is
clearly on or before September 28, 2000, applicant merely
submitted a copy of such statement of use. Moreover, despite the
fact that the specimen submitted with the statement of use when
originally filed was indistinct and the term "PLAYTONE" could not
be seen, thereby prompting a requirement that applicant submit a
substitute specimen (which, as noted earlier, was also found to
be unacceptable), applicant insists that submitting a copy of its
statement of use as originally filed establishes that:
8 While the supporting declaration and accompanying response are both
dated March 5, 2002, the certificate of mailing by Express Mail which
is attached to the latter is dated March 4, 2002.
Ser. No. 75980911
11
Applicant has used the PLAYTONE mark in
commerce in connection with the goods at
issue at least as early as June 1, 1999,
which is prior to the date on which the
statement of use was filed. Therefore,
Applicant has properly verified its bona fide
use of its mark in commerce during the period
in question.
We concur with the Examining Attorney, however, that
the refusal is well taken. As the Examining Attorney correctly
points out, the declaration submitted by applicant on or about
March 5, 2002 in support of its use of the substitute specimen
which is for a poster for the movie "MY BIG FAT GREEK WEDDING"
contains a date of first use anywhere and in commerce of February
2002, which is "well after applicant filed its June 1, 2002 SOU"
(i.e., statement of use). In particular, the response filed by
applicant on or about March 5, 2002 states that (underlining in
original): "Applicant amends its Statement of Use as follows:
Use of the mark anywhere: February 2002[;] Use of the mark in
commerce: February 2002." Likewise, its supporting declaration
for the substitute specimen recites that: "The correct dates of
first use as stated in Applicant's Amendment are: Date of first
use anywhere: February 2002 and Date of first use in commerce:
February 2002." Thus, as the Examining Attorney properly notes,
"[e]ffectively, the declaration states that the mark [PLAYTONE]
was not in use in commerce ... when applicant filed its SOU" and
the refusal, in view thereof, "must be maintained."9 See
Trademark Rule 2.71(c)(2).
9 We note, moreover, that applicant has not further amended the dates
of first use set forth in its statement of use. While the Examining
Attorney adds that "[a] possible solution may be for applicant to
submit a new declaration with use dates before June 1, 2000 or
Ser. No. 75980911
12
Decision: The refusals to register are affirmed.
September 28, 2000," such may not be possible if, as it would seem,
the posters (and other promotional materials) for applicant's "MY BIG
FAT GREEK WEDDING" motion picture were not in actual use until
sometime shortly before the theatrical release of such movie in early
2002.