Ttab Decisions and Developments

• Publication year: 2023
• Author: Jane Shay Wald

TTAB DECISIONS AND DEVELOPMENTS

Jane Shay Wald

Irell & Manella LLP

"Boys World" For A Musical Group Jumped Through An Additional Hoop To Show Its Name Was A Musical Source Of Its Recordings, It Won (Of Course!)

The Board reversed the Examining Attorney's refusal to register the mark BOYS WORLD for audio recordings featuring music. Applicant apparently holds the rights to the name of a very popular musical "girl group" that is sometimes referred to as "the Gen Z Spice Girls." The nature of its relationship with the BOYS WORLD mark was not developed in the record. In footnote 7, the Board brushed off the Examining Attorney's argument that the record does not show "unambiguous use of the mark" because BOYS WORLD was formed by KYN Entertainment, identified in copyright notices as an owner of certain BOYS WORLD recordings. Said the Board: "This argument is not well-taken because, as the Federal Circuit pointed out in Polar Music, a trademark 'need not be the name of the manufacturer of the goods and the public need not know the name of the owner of the mark.'" Moreover, 'the public need not know [KYN Entertainment's] role." In re Polar Music Int'l AB, 221 USPQ 315, 317 (Fed. Cir. 1983).

The Examining Attorney had refused registration on the basis that BOYS WORLD does not function as a mark, and is "merely the name of a performing group and would not necessarily be seen as a source identifier." The Board made clear that performing artists' names obviously identify the artists, using Bruce Springsteen and Rolling Stones as examples. But performers' names may in addition serve as source indicators by which the artists' records, such as Born to Run or Exile on Main Street, may be distinguished from the records of others. In other words, Bruce Springsteen is a person, but that status does not remove the ability of BRUCE SPRINGSTEEN to act as a mark. The Board cited In re Polar for the point that "'it is commonplace for the public to request records and tapes by the name of the recording artist.'" In footnote 4, the Board makes the point that, as the record in the BOYS WORLD case revealed, recordings are now offered digitally, rather than, as in 1983, by records and tapes. The Board relied on the absence of anything in the record to show "how producing and distributing digital recordings differs from producing and distributing analog recordings, or whether or how any such differences relate to or

[Page 47]

impact trademark use for recordings, or the public's perception thereof."

The Examining Attorney had also refused registration on the basis that the mark was not used as a series. Subsequently, the "series" issue was conceded by the Examining Attorney after Applicant put additional evidence in the record following the failure to function refusal. Nonetheless, the Board had a go at the issue, explaining that a performing artist's name typically must be used for a series of recordings to qualify for registration, akin to the requirement for books and other media titles. It cited TMEP Sec. 1202.09 (a) providing the name of an author or performer may be registered if: (1) It is used on a series of written or recorded works; and (2) The application contains sufficient evidence that the name identifies the source of the series and not merely the writer of the written work or the name of the performing artist. The Board found that the BOYS WORLD specimen and additional materials of record supported Applicant, who met these conditions, finding BOYS WORLD was used as a series name and functioned as a mark pursuant to that requirement.

The Board turned to the remaining issue whether Applicant met its burden of proof by providing sufficient evidence of promotion and recognition such that consumers would understand BOYS WORLD as identifying the source of the series, and not only the name of the recording artist or group. Applicant's substantial evidence of record easily met its burden of proof. Popular pages and videos linked to promotion for the mark had hundreds of thousands and, in several cases, millions of views. The Board found the articles in the record, especially in Billboard and People, revealed widespread recognition of BOYS WORLD. The Board concluded that BOYS WORLD is consistently identified by streaming services, and social, print and web media, as the source of BOYS WORLD audio recordings featuring music. "As a result, consumers 'know what they are getting' when they purchase BOYS WORLD 'audio recordings featuring music.'" Therefore, BOYS WORLD functions as a mark. In re ZeroSix, LLC, Ser. No. 889812832 (TTAB) Original Decision May 1, 2023, Redesignated Precedential June 14, 2023.

A Guitar-Shaped Hotel Was Distinctive, Unique "Some Tertium Quid" Held The Board You Don't See These Every Day Of The Week So The Applicant Handily Scored

The Board decided two cases for virtually the same type of configuration mark—buildings. The Board applied the same law in each, and ruled on the same day in each case, citing the same authorities. Two separate TTAB panels reached different results in the two cases. What happened?

Different Examining Attorneys had refused registration to two unrelated Applicants whose applications claimed trade dress in the exterior appearance of their respective hotel buildings. While both Applicants sought to register the "look" of their hotel exteriors, only one presented a highly distinctive design and persuasive facts that the shape of its hotel was inherently distinctive. No showing of acquired distinctiveness was necessary. The Board reversed the refusal register.

The Board found the other Applicant's hotel exterior unremarkable, with no showing consumer recognition apart from the HILTON sign on the exterior. Not only was the unlucky Applicant unable to show inherent distinctiveness, it couldn't convince the Board of acquired distinctiveness. The Board upheld the refusal to register.

In the first of this pair of cases, In re Seminole Tribe of Florida, Applicant sought registration of "trade dress consisting of a three-dimensional building in the shape of a guitar" for casinos, hotel, restaurant and bar services. This "guitar mark" is 36 stories high, reaching 450 feet, in use at "Seminole Hard Rock Hollywood." The entire structure is shaped like a guitar, and is promoted as "the first-ever Guitar Hotel." The Examining Attorney would have allowed the application subject to Sec. 2(f), finding that the record supported a showing of

[Page 48]

acquired distinctiveness. The Applicant nonetheless appealed, seeking registration of the mark as inherently distinctive. Registrations issued pursuant to Sec. 2(f), when asserted in litigation, can be argued to be less distinctive than those registered without such claims. Indeed, accepting a claim of Sec. 2(f) can be argued as an admission that the mark is not as strong as if it were registered without that claim.

The Board cited authorities for the position that the critical inquiry in determining whether a designation functions as a mark is how the relevant public would perceive it. A mark is inherently distinctive, with no need to show acquired distinctiveness, if its "intrinsic nature serves to identify a particular source," Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000), quoting Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992).

The Two Pesos case concerned the consistent décor of a chain of Mexican restaurant. Plaintiff had no registration, but sued a competitive Mexican restaurant under Sec. 43(a) for trademark infringement. The Supreme Court affirmed that there is no need to prove secondary meaning to prevail in a claim under Sec. 43(a) of the Lanham Act where the trade dress is inherently distinctive, and upheld protection. Eight years later, in Samara Bros., the Supreme Court considered Wal-Mart's accused knockoffs of Samara Brothers' children's seersucker outfits featuring appliques. There, the Supreme Court held that "in an action for infringement of unregistered trade dress under Sec. 43(a) of the Lanham Act, a product design is distinctive, and therefore protectable, only upon a showing of secondary meaning." The Supreme Court distinguished product design trade dress from product packaging trade dress in Sec. 43(a) cases. (Note that in cases asserting registered trade dress, the "distinctiveness" arises from the registration.) Product design can never be inherently distinctive. Product packaging, depending on the "look" and other facts, can sometimes be inherently distinctive. In the Wal-Mart v. Samara Case, the Supreme Court grappled with the "product design" versus "product packaging design" distinction that Two Pesos had not addressed. Justice Scalia, writing for a unanimous Court, decided that the restaurant décor, was "either product packaging...or else some tertium quid that is akin to product packaging and has no bearing on the present case." Wal-Mart v. Samara sent most trademark lawyers to look up "tertium quid," learning that it means something that can't be classified into either of two groups. In other words, some other darned thing altogether. Here, the Board found Applicant's Guitar Design to be "some 'tertium quid' that is akin to product packaging" and inherently distinctive. It is therefore registrable without a claim of acquired distinctiveness.

The Board relied as well on two cases decided after the Supreme Court's ruling in Two Pesos v Taco Cabana and Wal-Mart v. Samara. In re Chippendales USA, 96 USPQ 1681 at 1685 (Fed. Cir. 2010), which concerned the collar and cuffs costumes of the male...