XM Satellite Radio Inc.

Trademark Trial and Appeal Board

Aug 21, 2003

No. 76002802 (T.T.A.B. Aug. 21, 2003)

Mailed: August 21, 2003
Paper No. 16
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UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re XM Satellite Radio Inc., assignee of XM Satellite
Radio Holdings, Inc.
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Serial No. 76/002,802
_______
Cynthia D. Greer and Nancy S. Lapidus of Shaw Pitman LLP
for XM Satellite Radio Inc.
Chrisie Brightmire King, Trademark Examining Attorney, Law
Office 103 (Mike Hamilton, Managing Attorney).
_______
Before Seeherman, Hanak and Holtzman, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
SM Satellite Radio Inc., assignee of SM Satellite
Radio Holdings, Inc., the original applicant, has appealed
from the final refusal of the Trademark Examining Attorney
to register REAL JAZZ for "entertainment services, namely,
providing audio programs featuring music, sports, talk,
news and data via satellite and via a global communication
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76/002,802
2
network."1 Although applicant has offered a disclaimer of
JAZZ, registration has been refused pursuant to Section
2(e)(1) of the Trademark Act, 15 U.S.C. 1052(e)(1), on the
ground that applicant's mark is merely descriptive of its
services.
Applicant and the Examining Attorney filed appeal
briefs;2 applicant did not request an oral hearing.
The Examining Attorney asserts that REAL JAZZ is
merely descriptive of applicant's services because it
describes a significant feature of them, specifically, the
type of music being transmitted.
In support of her position, the Examining Attorney has
submitted excerpts from a large number of articles taken
from the NEXIS database, including the following:3
1 Application Serial No. 76/002,802, filed March 17, 2000. The
application was based on an asserted intention to use the mark in
commerce; during the course of prosecution, applicant submitted
an Amendment to Allege Use claiming first use and first use in
commerce as of September 25, 2001.
2 With its brief applicant submitted an updated version of a web
site that was made of record by the Examining Attorney in her
action denying applicant's request for reconsideration, to show
that Net Radio Live ceased business on December 31, 2002.
Although the proper procedure to make this evidence of record
would have been to file a request for remand, given that this is
just an updated version of the Examining Attorney's evidence, and
that the Examining Attorney has raised no objection thereto, we
have considered this material.
3 With the first Office action, the Examining Attorney submitted
Stories No. 1-10, 100-110 and 200-210 of the 375 retrieved from
her search. Applicant points out that many of these articles do
not show descriptiveness of REAL JAZZ. We agree. However, it is
clear that the Examining Attorney did not submit all the articles
because she believed they evidenced descriptiveness; rather, she
Ser No. 76/002,802
3
...1938 than it is today, at least one
conceit in the music's history was
already in place. It was the notion
that real jazz was something apart from
mass bourgeois culture and that its
audience was a smaller but higher
community of true believers....
...They became the first generation of
jazz critics, theoreticians and
intellectuals. Among their missions
was to distinguish between "real" jazz
and the knock-off variety. The basic
assumption that there was a "real" jazz
served a couple of solidifying
purposes....
...But in 1938 what was real jazz,
whose recorded history was only 21
years old? The future was still vague,
so many decided that real jazz was what
it had been before the concessions to
swing....
"Down Beat," October 1, 2001
...decision to provide listeners in the
KUOR area with straight-ahead jazz—real
jazz—and blues on a 24-7 basis....
"The Press-Enterprise," August 31, 2001
Fans of "real jazz," as its devotees
might term it, were treated to two
consecutive displays of the top-shelf
stuff Saturday....
"St. Petersburg Times," October 22,
2001
Mr. Marsalis held up bebop—then a 40-
year-old genre—as real jazz.
"The Dallas Morning News," May 5, 2000
was attempting to show that she had not cherry-picked only the
articles that were favorable to her position. In the future, it
would be acceptable for the Examining Attorney to eliminate the
"noise" articles, those from foreign publications, and those
which are for different goods or services (in this case, the
articles relating to the Utah Jazz basketball team) and still
state that the articles which are submitted are representative of
those which were retrieved.
Ser No. 76/002,802
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Real jazz, according to Sherrell,
represents the classics. It's swinging
be-bop, blues-based main-stream,
straight-ahead jazz music....
"Chicago Defender," October 8, 2001
"(Ellington's suite) is written in a
real jazz style, and it gives the
instruments a chance for improvisation,
but you still feel the flavor...
"The Deseret News," December 2, 2001
"His efforts are one reason we've been
able to keep real jazz happening in
Tampa."
"St. Petersburg Times," May 11, 2001
Real jazz fans tend to be
understandably vexed by the huge,
misleading phenomenon known as "smooth
jazz."
"Los Angeles Times," December 15, 2000
Reading metropolitan newspapers and
periodicals and engaging in comparison,
my conclusion is that this masterful
critic, a proponent of the real jazz,
has few, if any, peers.
"The Columbus Dispatch," May 4, 2000
The remainder of the program consists
of "real" jazz, pieces written for
late-night bar improvs; blues, rags,
and mood pieces with echoes of Joplin,
Ellington, Ravel, and...
"American Record Guide," May 1, 2000
In recent years, WNOP-AM returned to
its roots as "Real Jazz 740" under
General Manager Mark Stevens....
"The Cincinnati Enquirer," December 20,
2000
Ser No. 76/002,802
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...Armstrong, Charlie Parker, Dizzie
Gillespie and Coleman Hawkins in a big
band format."
Says Plumleigh, "it's the real jazz
that musicians really appreciate."
"The Recorder," April 27, 2000
Headline: Pop Music Review; St. Germain
Shows Range in L.A. Debut
Maybe it will steer fans toward some
real jazz shows.
"Los Angeles Times," December 15, 2000
...irony they ignored, they chose
Armstrong—the very soloist who blew
apart old-style New Orleans polyphony,
their idea of "pure" or "real" jazz.
By 1947 Satchmo reluctantly abandoned
his eighteen-piece outfit for the All
Stars, a New Orleans-style....
"The Nation," November 27, 2000
Exline said there are still several
formats that aren't available in
Owensboro. "We don't have a real jazz
station," he said. "No true
alternative rock station. And we don't
have a good bluegrass station."
"Messenger-Inquirer," May 9, 2000
In addition to the NEXIS evidence, the Examining
Attorney submitted excerpts from various websites.4 They
include the following, taken from the website of WBEE 1570
AM:
What is Real Jazz?
Our Definition:
Real Jazz music is the uncompromised
and unmistakened sounds of swinging
blues-based music. Real Jazz music
4 We have not considered the summary of the first ten results
retrieved by the Google search, as they are taken out of context,
and too truncated to be of any probative value.
Ser No. 76/002,802
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must also embody the simple but most
important element improvision.
www.realjazzmusic.com
The test for determining whether a mark is merely
descriptive has been set out in both applicant's and the
Examining Attorney's briefs. A mark is merely descriptive
if it immediately conveys information concerning a quality,
characteristic, function, ingredient, attribute or feature
of a product or service. It does not have to describe
every one of these. It is enough if it describes a single,
significant quality, feature, function, etc. Moreover, the
question is not decided in a vacuum but in relation to the
goods on which, or the services in connection with which,
it is used. In re Venture Lending Associates, 226 USPQ
285, 286 (TTAB 1985).
There is no question that the term JAZZ per se is
merely descriptive of applicant's services. Applicant has
explained that it provides 100 channels of digital
programming, including music, which is delivered to cars
and homes via satellite on a subscription basis. Applicant
uses the mark REAL JAZZ for its "jazz channel 'from the 20s
to today.'" Brief, p. 14 Applicant's disclaimer of the
word JAZZ in its mark is a further acknowledgement that
JAZZ describes a feature of its services.
Ser No. 76/002,802
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However, applicant contends that the mark as a whole,
REAL JAZZ, is not merely descriptive of its services,
asserting that the Examining Attorney has failed to
demonstrate that REAL JAZZ identifies a genre of music.
The problem with applicant's position is that the
Examining Attorney is not required to demonstrate that REAL
JAZZ is the name of a category or genre of music. As the
Examining Attorney explained in her brief, she is not
asserting that REAL JAZZ is a generic term, only that it is
merely descriptive of applicant's services.
Having reviewed the evidence of record, we cannot say
with certainty that "real jazz" is used to described a
particular style of jazz music. There is certainly
evidence that indicates that this is the case. For
example, articles indicate that "real jazz" is a term for
what is also known as be-bop, or "straight-ahead" jazz; or
"pure" jazz; or jazz music before the influence of swing.
It is also not "smooth" jazz. However, because the word
"real" has meanings such as "true" and "good," the term
REAL JAZZ in the various NEXIS articles may also be
considered to have this meaning, rather than referring to a
particular style or genre.
We need not decide that question, however, because we
find that REAL JAZZ is a merely descriptive term for
Ser No. 76/002,802
8
applicant's services even if it is not the name of a
category or genre of music. As applicant itself
acknowledges, "real" has a laudatory significance when
paired with "jazz." In its brief, applicant characterizes
the use of "real" paired with "jazz" in the articles as "an
adjective meaning authentic and genuine, which is used to
describe jazz music." Brief, p. 5. When the laudatorily
descriptive term meaning "authentic" and "genuine" is
combined with the descriptive term "jazz" in the phrase
REAL JAZZ, and used in connection with applicant's
identified services, it immediately conveys to consumers
that they will find authentic and genuine jazz music on
applicant's audio programs. Thus, the mark is merely
descriptive.
Applicant points to certain third-party registrations
for "REAL" marks which were registered on the Principal
Register without resort to Section 2(f), e.g., REAL GOSPEL
("gospel" disclaimed), REAL RADIO ("radio" disclaimed),
BOSTON'S REAL ALTERNATIVE ("Boston's" and "alternative"
disclaimed), REAL ROCK RADIO ("rock radio" disclaimed) and
REAL MUSIC FROM REAL ARTISTS, all for radio broadcasting
services; and MAI CRAMER'S REAL BLUES ("blues" disclaimed)
for production of radio programs featuring blues music.
Applicant contends that if these marks were sufficiently
Ser No. 76/002,802
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distinctive for registration, then applicant's mark should
be registered as well.
We think there are significant differences in the
commercial impressions of several of these marks, in
particular, REAL RADIO, REAL MUSIC FROM REAL ARTISTS and
the double entendre of BOSTON'S REAL ALTERNATIVE, such that
their acceptance on the Principal Register has no bearing
on our decision herein. More importantly, the Court of
Appeals for the Federal Circuit has made it clear, when a
similar argument was raised in In re Nett Designs Inc., 236
F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001), even if some
prior registrations had some characteristics similar to
applicant's mark, the USPTO's allowance of such prior
registrations does not bind the Board.
Moreover, in this case we have evidence of a third-
party registration, Registration No. 2,454,877, for radio
broadcasting services in which the identical term, REAL
JAZZ, was disclaimed, thus indicating the descriptive
nature of this phrase. There is also evidence in the NEXIS
excerpts that third parties use the term REAL JAZZ as a
descriptive element in their respective names. See, for
example, "The John Scofield 'Real Jazz' Project," used in
connection with jazz performances ("SF Weekly," May 16,
2001). If applicant were to obtain a registration for REAL
Ser No. 76/002,802
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JAZZ, that would certainly hinder competitors, and
particularly the owner of Registration No. 2,454,877 from
using its mark which contains the disclaimed, descriptive
term.
Decision: The refusal of registration is affirmed.