`Precedent of the TTAB
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`
`
`Hearing: July 12, 2017
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`Mailed: March 26, 2018
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`
`Trademark Trial and Appeal Board
`_____
`
`In re Serial Podcast, LLC
`_____
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`Serial Nos.
`86454420
`86454424
`86464485
`_____
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`Matthew T. Furton, Sean C. Fifield, and David T. Van Der Laan
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`of Locke Lord LLP, for Serial Podcast, LLC.
`
`Colleen M. Dombrow, Trademark Examining Attorney, Law Office 101,
`Ronald R. Sussman, Managing Attorney.
`_____
`
`
`Before Taylor, Shaw and Heasley,
`Administrative Trademark Judges.
`
`
`Opinion by Heasley, Administrative Trademark Judge:
`Serial Podcast, LLC (“Applicant”) seeks registration on the Principal Register of
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`three marks:
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`
`
`
` SERIAL (in standard characters);1
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`1 Application Serial No. 86454420 was filed on November 14, 2014, based upon a claim of first
`use anywhere and use in commerce since at least as early as September 19, 2014. 15 U.S.C.
`§ 1051(a).
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`Serial Nos. 86454420, 86454424, 86464485
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` (word and design);2 and
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` (word and design).3
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` All three marks are for “entertainment in the nature of an ongoing audio program
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`featuring investigative reporting, interviews, and documentary storytelling” in
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`International Class 41.
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`The Examining Attorney has refused registration of all three marks on the
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`grounds that each is generic for the identified services, or, if not generic, merely
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`descriptive of the services. 15 U.S.C. §§ 1051, 1052(e)(1), 1053, and 1127. In each case,
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`Applicant has responded that the mark is not generic, and has acquired
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`distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f). The
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`Examining Attorney has nonetheless maintained the genericness refusals and has
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`found Applicant’s evidence insufficient to prove acquired distinctiveness. When the
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`refusals were made final, Applicant appealed and requested reconsideration. After
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`the Examining Attorney denied the requests for reconsideration, the appeals
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`2 Application Serial No. 86454424 was filed on November 14, 2014, based upon a claim of first
`use anywhere and use in commerce since at least as early as September 19, 2014. 15 U.S.C.
`§ 1051(a). The Application includes the following description of the mark: “The mark consists
`of the word ‘SERIAL’ in outlined letters, with each letter placed in a rectangle with rounded
`corners.” Color is not claimed as a feature of the mark.
`3 Application Serial No. 86464485 was filed on November 25, 2014, based upon a claim of first
`use anywhere and use in commerce since at least as early as September 19, 2014. 15 U.S.C.
`§ 1051(a). The Application includes the following description of the mark: “The colors red,
`yellow and black are claimed as a feature of the mark. The mark consists of the word
`‘SERIAL’ in yellow letters outlined in red, with each letter placed in a black rectangle with
`rounded corners. The color white in the drawing represents background and is not a feature
`of the mark.”
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`Serial Nos. 86454420, 86454424, 86464485
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`resumed and were consolidated.4 Applicant and the Examining Attorney submitted
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`briefs, and appeared at an oral hearing before the Board.
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`I. THE STANDARD CHARACTER MARK
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` The Examining Attorney maintains that the proposed standard character mark,
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`SERIAL, is generic for the services recited in the application. Applicant maintains
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`that the proposed mark is not generic, but descriptive, and has acquired
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`distinctiveness under Section 2(f), which states that “nothing in this chapter shall
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`prevent the registration of a mark used by the applicant which has become distinctive
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`of applicant’s goods [or services] in commerce.” 15 U.S.C. §§ 1052(f), 1053.
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`A. The Proposed Standard Character Mark, SERIAL, Is Generic
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` “A generic term is the common descriptive name of a class of goods or services.”
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`In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1634 (Fed. Cir. 2016)
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`(quoting Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114
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`USPQ2d 1827, 1830 (Fed. Cir. 2015) and H. Marvin Ginn Corp. v. Int’l Ass’n of Fire
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`Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986) (internal punctuation
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`omitted)). Generic terms are “the ultimate in descriptiveness.” Marvin Ginn, 228
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`USPQ at 530, quoted in In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d
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`1262, 1264 (Fed. Cir. 2015). They are not registrable because “[g]eneric terms, by
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`definition incapable of indicating source, are the antithesis of trademarks, and can
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`never attain trademark status.” In re Merrill Lynch, Pierce, Fenner, & Smith, Inc.,
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`4 14 TTABVUE. Unless otherwise stated, all references to the record and the arguments
`pertain to Application Serial No. 86464485. All references to the Trademark Status &
`Document Retrieval (“TSDR”) database are to the downloadable .pdf version.
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`Serial Nos. 86454420, 86454424, 86464485
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`828 F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987), quoted in Cordua, 118 USPQ2d
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`at 1634.
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`“The critical issue in genericness cases is whether members of the relevant public
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`primarily use or understand the term sought to be protected to refer to the genus of
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`goods or services in question.” Marvin Ginn, 228 USPQ at 530, quoted in Earnhardt
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`v. Kerry Earnhardt, Inc., 864 F.3d 1374, 123 USPQ2d 1411, 1413 (Fed. Cir. 2017).
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`Making this determination “involves a two-step inquiry: First, what is the genus of
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`goods or services at issue? Second, is the term sought to be registered … understood
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`by the relevant public primarily to refer to that genus of goods or services?” Marvin
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`Ginn, 228 USPQ at 530; see Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121
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`USPQ2d 1477, 1483 (TTAB 2017). The Examining Attorney must establish with clear
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`and convincing evidence that a proposed mark is generic. Cordua, 118 USPQ2d at
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`1635.
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`The Examining Attorney and Applicant concur that the genus in this case is set
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`forth by the recitation of services in each subject application: “entertainment in the
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`nature of an ongoing audio program featuring investigative reporting, interviews,
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`and documentary storytelling.” See generally Cordua, 118 USPQ2d at 1636; Magic
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`Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991) (“[A]
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`proper genericness inquiry focuses on the description of services set forth in the
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`[application or] certificate of registration.”). The relevant public consists of ordinary
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`listeners of audio programs.5 Evidence of the relevant public’s understanding of a
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`5 Applicant’s brief p. 7, 7 TTABVUE 10, Examining Attorney’s brief 9 TTABVUE 6.
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`Serial Nos. 86454420, 86454424, 86464485
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`term may be obtained from any competent source, including testimony, surveys,
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`dictionaries, trade journals, newspapers and other publications. See Cordua, 118
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`USPQ2d at 1634.
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`The Examining Attorney has adduced dictionary definitions showing that the
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`word “SERIAL” means something that is published or broadcast in installments at
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`regular intervals, e.g.:
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`• MacMillan Dictionary: Serial: “A story that is broadcast or published in a
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`series of separate parts.”
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`• Dictionary.com: Serial: “Anything published, broadcast, etc., in short
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`installments at regular intervals, as a novel appearing in successive issues of
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`a magazine.”
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`• Oxford Dictionary: Serial: “A story or play appearing in regular installments
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`on television or radio or in a periodical.”6
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`Applicant produces an ongoing audio program, a podcast7 appearing in regular
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`weekly installments. According to its website:
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`Serial tells one story – a true story – over the course of an entire season.
`Each season, we’ll follow a plot and characters wherever they take us. And
`we won’t know what happens at the end until we get there, not long before
`you get there with us. Each week we bring you the next chapter in the
`story, so it’s important to listen to the episodes in order, starting with
`Episode 1.8
`
`6 Macmillan Dictionary, 3/20/2016; Dictionary.com, 3/20/2016; OxfordDictionaries.com
`/us/definition/American_english/ serial, 3/20/2016, March 22, 2016 Office Action TSDR pp.
`29, 30, 34.
`7 “A podcast is a digital audio file about a specific topic that is released in a serial format for
`download to a computer or personal device.” NUIGalway.ie 3/21/2016, March 22, 2016 Office
`Action TSDR p. 70.
`8 SerialPodcast.org 2/9/2015 Feb. 10, 2015 Office Action TSDR p. 10.
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`According to Applicant’s manager and editorial adviser, Ira Glass, “The first
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`season of the podcast ran for over two months, with a total of twelve episodes
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`premiering on October 3, 2014 and concluding on December 18, 2014.”9 Applicant’s
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`Business Operations Manager, Elise Bergerson, echoed this description of Applicant’s
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`episodic program.10 According to Forbes magazine, “Serial is a season-based podcast
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`where a single story is discussed in detail over a dozen (or so) episodes.”11 According
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`to the Examining Attorney, Applicant’s sequential, episodic podcasts meet the
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`dictionary definition of a serial: “the applicant’s audio program is a serial in that it is
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`broadcast in separate parts over a period of time.”12
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`The genus of “ongoing audio program” in Applicant’s identification of services
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`encompasses both podcasts and radio broadcasts. As a Cincinnati Enquirer article
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`put it, “Podcasts are reviving a declining radio art form―the serial, fictional or
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`documentary, with a compelling story and characters so vivid you can almost see
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`them.”13 The serial has long been a staple of the radio waves. There was, for example:
`
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`9 Affidavit of Ira Glass, ¶ 5, Aug. 10, 2015 Response to Office Action TSDR p. 21.
`10 Affidavit of Elise Bergerson, ¶ 5, March 1, 2016 Response to Office Action TSDR p. 8.
`11 “Everything You Need to Know About Listening to Podcasts, My Favorite Free Form of
`Entertainment” Forbes.com, Sept. 22, 2016 Response to Office Action TSDR p. 29.
`12 Examining Attorney’s brief 9 TTABVUE 7.
`13 The Cincinnati Enquirer May 10, 2015, March 22, 2016 Office Action TSDR p.17.
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`14
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`Some popular television programs, like the Lone Ranger, began as radio serials:
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`Another example is Sky King:
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`15
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`14 SergeantPreston.com 9/1/2015 Sept. 1, 2015 Office Action TSDR p. 26.
`15 Entertainment.HowStuffWorks.com 3/17/2016, March 22, 2016 Office Action TSDR p. 48.
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`The tradition of radio serials continued through the decades. For example:
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`16
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`
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`17
`
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`16 MidAtlanticNostalgiaConvention.com 2/10/2015, Feb. 10, 2015 Office Action TSDR pp. 42-
`45.
`17 Search.credoreference.com 3/17/2016, March 22, 2016 Office Action TSDR p. 53.
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`And the tradition of radio serials continues to this day.18
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`Applicant argues that the Examining Attorney did not meet her burden of proving
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`that SERIAL is a term that the relevant purchasing public understands primarily as
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`the common name for ongoing audio programs. The references using the term “serial”
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`as a noun are antiquated and archaic, Applicant contends, “referring to decades-old
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`entertainment genres that are unlikely to affect the relevant public’s primary
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`perception of the term in the podcast era.”19 Applicant appends a table containing
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`examples of these assertedly antiquated uses from the record:
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`
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`18 Public AccessTheatre.org 2/10/2015 Feb. 10, 2015 Office Action TSDR p. 16.
`19 Applicant’s brief pp. 11, 7 TTABVUE 14.
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` Applicant admits that there are a few modern examples in the record of generic
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`usage of “serial” as a noun, but maintains that these few instances pale in comparison
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`to the “voluminous, recent and prominent” usage of “serial” as an adjective, describing
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`a characteristic of audio programs, e.g.:21
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`20
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`20 Applicant’s brief pp. 11-12, 7 TTABVUE 14-15.
`21 Applicant’s brief p. 12, 7 TTABVUE 15, citing Sept. 1, 2015 Office Action TSDR p. 25.
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`22
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`Applicant posits that all of these adjectival uses of the term “serial” are
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`descriptive, denoting the ongoing narrative nature of generic classes of programs like
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`“radio drama,” “radio comedy,” “radio episode,” or “drama.” And since the term is
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`descriptive, Applicant concludes, it can acquire distinctiveness under Section 2(f).23
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`But Applicant’s distinction between nouns and adjectives is unavailing, as both
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`can be generic. Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341, 1366
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`22 Applicant’s brief pp. 9-10, 7 TTABVUE 12-13.
`23 Applicant’s brief pp. 11, 13, 7 TTABVUE 14, 16.
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`(TTAB 2013) (finding adjective “footlong” generic in connection with sandwiches); see
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`also In re Cent. Sprinkler Co., 49 USPQ2d 1194, 1199 (TTAB 1998) (“[A]pplicant’s
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`mark does not present the classic case of a generic noun, but rather a generic
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`adjective.”).24 For this reason, the TRADEMARK MANUAL OF EXAMINING PROCEDURE
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`(“TMEP”) states that “The expression ‘generic name for the goods or services’ is not
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`limited to noun forms but also includes ‘generic adjectives,’ that is, adjectives that
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`refer to a genus, species, category, or class of goods or services.” See generally TMEP
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`§ 1209.01(c)(ii) (Oct. 2017) and cases cited therein.
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`Applicant’s argument that “serial” is an antiquated term that the public no longer
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`understands is similarly unavailing. Some of the programs discussed above may be
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`from a bygone era, many decades past, but the term “serial” is frequently used in the
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`present day, with no need to explain to contemporary readers or listeners what a
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`serial is. Further, current dictionary definitions define “serial” as both a noun and an
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`adjective, e.g.:
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`
`
`
`
`
`
`
`American Heritage Dictionary
`adj. “Published or produced in installments, as a novel or television drama.”
`n. “A literary or dramatic work published or produced in installments.”
`
`Merriam-Webster Dictionary
`adj. “appearing in successive parts or numbers.”
`n. “a story that is broadcast on television or radio or that is published in a
`
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`24 See also Rudolph Int’l., Inc. v. Realys Inc., 482 F.3d 1195, 82 USPQ2d 1375, 1377 (9th Cir.
`2007) (“Adjectives, as well as nouns, can be generic marks.”) (citation omitted); Mil-Mar Shoe
`Co. v. Shonac Corp., 75 F.3d 1153, 37 USPQ2d 1633, 1639 (7th Cir. 1996) (“An easy ‘noun
`versus adjective’ test to signify a mark as either generic or descriptive, respectively, does not,
`however, adequately characterize the law of this circuit, nor would such a simplistic approach
`adequately embody fundamental principles of trademark law.”) (footnote omitted).
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`magazine in separate parts over a period of time.”25
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` Recent online articles also use the term “serial” as both a noun and adjective,
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`generically denoting episodic broadcasts or podcasts:
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`• Brooklyn College, City University of New York website announces that
`“students and faculty have conceived, written, and produced a serial radio
`drama about AIDS….” A photo shows “A student ‘on the air’ in Brooklyn
`College’s radio serial….”26
`
`• The Atlanta Radio Theatre Company website presents a story “as a 1-hour
`standalone adventure and as a 12-part expanded serial!”27
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`• The Granite City Radio Theatre presents “a radio drama serial….”28
`
`• The Detroit News reports on “Welcome to Night Vale,” “a hugely successful
`podcast about supernatural goings-on in a fictional Southwest town, that is
`best described as ‘A Prairie Home Companion’ meets ‘Twin Peaks.’” Narrator
`Cecil Baldwin “spoke with The Detroit News about the origins of the show and
`the surprise return of the traditional radio serial: …
`Q: What do you think about the resurgence of the classic radio serial format
`in the podcast era?”29
`
`• The Columbia College Chicago radio station website states that “With the
`advent of podcasting, a resurgence of Theater of the Mind has led students of
`Columbia College Chicago to create contemporary tales in this traditional
`medium.” It describes “a 15-part audio serial, written, directed and produced
`by Columbia College Chicago Radio students.” “Judge for yourself as Columbia
`College Chicago students bring you a nine-part serial….”30
`
`• The Chattanooga Times Free Press states, “Judged solely by its opening
`monologue, locally produced radio serial ‘Horace Kentucky’s Chronal
`
`
`25 American Heritage Dictionary AHDictionary.com, Feb. 10, 2015 Office Action TSDR p. 5;
`Merriam-Webster.com, March 22, 2016 Office Action TSDR pp. 37-38.
`26 www.Brooklyn.cuny.edu Feb. 10, 2015 Office Action TSDR pp. 14-15.
`27 Artc.org 9/1/2015 Sept. 1, 2015 Office Action TSDR pp. 12-13.
`28 Ppfive.com 9/1/2015 Sept. 1, 2015 Office Action TSDR pp. 21-22.
`29 DetroitNews.com 5/8/2016, downloaded 3/21/2016, March 22, 2016 Office Action TSDR p.
`71.
`30 Colum.edu 3/21/2016, March 22, 2016 Office Action TSDR p. 73.
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`Detective Agency’ sounds like just another boilerplate noir drama stapled
`together by a series of cliches.” “Thanks to the ease of digital recording and self-
`publishable podcasts, the conditions are ripe for a resurgence of serials like
`‘Horace Kentucky,’ says WUTC radio personality Richard Winham.”31
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`These and other Internet articles and websites of record show that the term
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`“serial,” whether it is used as a noun or an adjective, refers categorically to ongoing
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`audio programs―programs that may emanate from multiple sources, not just a single
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`source. These examples of producers and commentators using the term to refer to a
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`category of services is persuasive evidence that the term would be perceived by the
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`relevant public, listeners of audio programs, as a generic designation of those
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`services. See In re Northland Alum. Prods., Inc., 777 F.2d 1556, 227 USPQ 961 (Fed.
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`Cir. 1985) (cookbooks and newspaper articles show “bundt” generic for a kind of
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`cake); In re Noon Hour Food Prods. Inc., 88 USPQ2d 1172 (TTAB 2008) (use of “Bond-
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`ost” in books, government and trade publications, on the Internet, and in newspapers
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`and magazines available to members of the general public shows term is generic for
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`a type of cheese); Cont’l Airlines, Inc. v. United Air Lines, Inc., 53 USPQ2d 1385
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`(TTAB 1999) (use of term “e-ticket” by media and competitors indicates term is
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`generic for electronic tickets).
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`Applicant, relying on In re Northland, argues that since its debut in October 2014,
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`over 12,000 media stories have referred to its SERIAL podcast. These media stories
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`appeared in publications such as the New York Times, Washington Post, Wall Street
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`31 www.timesfreepress.com 3/21/2016, March 22, 2016 Office Action TSDR pp. 74, 77.
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`Journal, LA Times, The New Yorker, The Atlantic, The Boston Globe, Rolling Stone,
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`and USA Today.32 For example:
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`
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`33
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`As Applicant notes, other podcasts’ success came to be measured by comparison
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`with “SERIAL”; media coverage termed successful programs “Serial-like” or
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`“Serialesque.” Due to its mainstream popularity, many online lists of the best
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`podcasts expressly excluded it, e.g. “8 of the Best Podcasts Out there (Other Than
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`‘Serial’).”34
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`“If the SERIAL mark were primarily perceived as a generic term,” Applicant
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`urges, “it would be natural—even necessary—for such publications to include some
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`32 Affidavit of Elise Bergerson ¶ 7, Sept. 22, 2016 Response to Office Action TSDR p. 11;
`Applicant’s brief p. 13, 7 TTABVUE 16; Affidavit of Ira Glass ¶ 13, Aug. 10, 2015 Response
`to Office Action TSDR p. 21.
`33 Aug. 10, 2015 Response to Office Action TSDR pp. 48, 52.
`34 Affidavit of Ira Glass ¶¶ 15-16, Aug. 10, 2015 Response to Office Action TSDR p. 25;
`Affidavit of Elise Bergerson ¶ 9, Sept. 22, 2016 Response to Office Action TSDR p. 11.
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`explanation that their use of the term SERIAL is intended as a reference to the
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`SERIAL podcast rather than as a generic reference to a certain type of audio
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`program.” “Otherwise, the reader would understand ‘Serial-like’ and ‘Serialesque’ to
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`describe any audio program that is published at regular intervals….” Yet Applicant
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`is unaware of any instances in which such an explanation has been included in the
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`extensive media coverage.35
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`The media stories to which Applicant refers, however, use capitalization, italics,
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`quotation marks and/or context, rather than explanations, to indicate that the
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`“Serial” to which they refer is one particular serial. For example:
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`• “SERIAL”: THE PODCAST WE’VE BEEN WAITING FOR
`
`•
`
`•
`
`•
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`‘Serial,’ Podcasting’s First Breakout Hit, Sets Stage for More
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`‘Serial’ Podcast Catches Fire
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`
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`‘Serial’ podcast makes Thursdays a Must-Listen event
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`• Serial Is Like Nothing I’ve Heard or Watched Before36
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`And these exist along with the previously cited articles, websites, and Internet stories
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`referring to serials produced by others who have used the term in its generic sense,
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`meaning a work that is published or produced in installments. See In re Northland,
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`227 USPQ 961.
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`
`
`
`35 Applicant’s brief p. 13, 7 TTABVUE 16; Applicant’s reply brief p. 5, 10 TTABVUE 8.
`36 The New Yorker Oct. 9, 2014, The New York Times Nov. 23, 2014, The Wall Street Journal
`Nov. 13, 2014, Entertainment Weekly, EW.com, Oct. 30, 2014, Slate Oct. 3, 2014, Aug. 10,
`2015 Response to Office Action TSDR pp. 42, 48, 52, 64, 68.
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` Applicant nevertheless contends that the mix of generic and non-generic uses in
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`the record precludes a finding of genericness.37 This is incorrect, however, for two
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`reasons. First, in this case, the so-called “mix” is of noun and adjective senses of the
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`word “serial,” both of which are generic. Second, even though some other articles refer
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`to Applicant’s serial podcast by its given name, “Serial,” that amounts, at most, to “de
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`facto secondary meaning” in a generic term. See, e.g., In re Northland Aluminum
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`Prods., Inc., 777 F.2d 1556, 227 USPQ 961, 964 (Fed. Cir. 1985) (“Having affirmed
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`the Board’s conclusion that BUNDT is a common descriptive name, neither obsolete
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`nor obscure, evidence of secondary meaning can not change the result.”) (citations
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`omitted); Roselux Chem. Co. v. Parsons Ammonia Co., Inc., 299 F.2d 855, 132 USPQ
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`627, 634 (CCPA 1962) (“To show that a common descriptive name has acquired a de
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`facto secondary meaning, in the sense that some or even many people have come to
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`associate it with a particular producer, is not in itself enough to show that it has
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`become entitled to registration as a trademark.”); see also In re Merrill Lynch, Pierce,
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`Fenner, & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987) (“To
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`allow trademark protection for generic terms, i.e., names which describe the genus of
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`goods being sold, even when these have become identified with a first user, would grant
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`the owner of the mark a monopoly, since a competitor could not describe his goods as
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`what they are.”) (emphasis added). As our primary reviewing Court has held:
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`While it is always distressing to contemplate a situation in which money
`has been invested in a promotion in the mistaken belief that trademark
`rights of value are being created, merchants act at their peril in
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`37 Applicant’s brief p. 14, 7 TTABVUE 17, citing Merrill Lynch, 4 USPQ2d at 1143-44.
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`Serial Nos. 86454420, 86454424, 86464485
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`attempting, by advertising, to convert common descriptive names, which
`belong to the public, to their own exclusive use. Even though they succeed
`in the creation of de facto secondary meaning, due to lack of competition or
`other happenstance, the law respecting registration will not give it any
`effect.
`
`In re Pennington Seed Inc., 466 F.3d 1053, 80 USPQ2d 1758, 1762 (Fed. Cir. 2006)
`
`(quoting Weiss Noodle Co. v. Golden Cracknel & Specialty Co., 290 F.2d 845, 129
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`USPQ 411, 414 (CCPA 1961)).
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`In sum, we find that the word SERIAL is generic for Applicant’s identified
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`services.
`
`B. The Proposed Standard Character Mark, SERIAL,
` Has Not Acquired Distinctiveness
`
`
`
`
` Despite having held that the term SERIAL is generic for Applicant’s services, for
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`completeness we turn to the Examining Attorney’s alternative refusal that SERIAL
`
`is merely descriptive and has not acquired distinctiveness. As the Examining
`
`Attorney correctly notes, Applicant’s unequivocal claim of acquired distinctiveness
`
`under Section 2(f) tacitly concedes that the applied-for marks are not inherently
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`distinctive, and must acquire distinctiveness to be registrable. See Cold War Museum,
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`Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir.
`
`2009); Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1005
`
`(Fed. Cir. 1988). “A mark that has acquired secondary meaning may serve as a
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`trademark and be protected even if the mark was not distinctive at the time of its
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`adoption.” G.H. Mumm & Cie v. Desnoes & Geddes Ltd., 917 F.2d 1292, 16 USPQ2d
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`1635, 1637 (Fed. Cir. 1990).
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`Serial Nos. 86454420, 86454424, 86464485
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` Applicant has the burden of proving acquired distinctiveness. In re La. Fish Fry
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`Prods., 116 USPQ2d at 1264. “To establish secondary meaning, a manufacturer must
`
`show that, in the minds of the public, the primary significance of a product feature or
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`term is to identify the source of the product rather than the product itself.” Inwood
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`Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851 n.11, 214 USPQ 1, 4 n.11 (1982). See
`
`also In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005)
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`(“To show that a mark has acquired distinctiveness, an applicant must demonstrate
`
`that the relevant public understands the primary significance of the mark as
`
`identifying the source of a product or service rather than the product or service
`
`itself.”) quoted in Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc.,
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`123 USPQ2d 1844, 1851 (TTAB 2017). The kind and amount of evidence necessary to
`
`establish that a proposed mark has acquired distinctiveness in relation to goods or
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`services depends on the nature of the proposed mark and the circumstances
`
`surrounding its use. In re Steelbuilding.com, 75 USPQ2d at 1424 (“the applicant’s
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`burden of showing acquired distinctiveness
`
`increases with the
`
`level of
`
`descriptiveness; a more descriptive term requires more evidence of secondary
`
`meaning.”) .
`
`For the reasons set forth above, Applicant’s standard character mark SERIAL, if
`
`not generic, is at best highly descriptive of its identified services, “entertainment in
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`the nature of an ongoing audio program featuring investigative reporting, interviews,
`
`and documentary storytelling.” “Highly descriptive terms … are less likely to be
`
`perceived as trademarks and more likely to be useful to competing sellers than are
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`Serial Nos. 86454420, 86454424, 86464485
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`less descriptive terms. More substantial evidence of acquired distinctiveness thus
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`will ordinarily be required to establish that such terms truly function as source-
`
`indicators.” Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750,
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`1767 (TTAB 2013), aff’d mem., 565 Fed. Appx. 900 (Fed. Cir. 2014).
`
` To prove acquired distinctiveness, an applicant may show not only the length and
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`exclusivity of its use of its marks, but also its sales success, unsolicited media
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`coverage, copying, and any similar evidence showing wide exposure of its marks to
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`consumers in a manner that would educate them to view the marks as source
`
`indicators, coupled with evidence of the effectiveness of these measures in inducing
`
`the purchasing public to identify the marks with their source. See In re
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`Steelbuilding.com, 75 USPQ2d at 1424; Apollo Med. Extrusion, 123 USPQ2d at 1851-
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`52; In re Keep A Breast Found., 123 USPQ2d 1869, 1882 (TTAB 2017); Trademark
`
`Rule 2.41(a)(3), 37 C.F.R. § 2.41(a)(3). “The ultimate test in determining whether a
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`designation has acquired distinctiveness is Applicant’s success, rather than its
`
`efforts, in educating the public to associate the proposed mark with a single source.”
`
`Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1480 (TTAB 2016).
`
` Although Applicant has used its logos in commerce for a relatively short period of
`
`time, Section 2(f) is permissive, allowing for proof of acquired distinctiveness by other
`
`means. See In re Fox River Paper Corp., 99 USPQ 173, 174 (Comm’r Pats. 1953) (“A
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`mark may become distinctive within a period of time much shorter than five
`
`years….”), cited in TMEP § 1212.01 (“The applicant may present any competent
`
`evidence to establish that a mark has acquired distinctiveness. Actual evidence of
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`Serial Nos. 86454420, 86454424, 86464485
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`acquired distinctiveness may be submitted regardless of the length of time the mark
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`has been used.”).
`
`In this case, Applicant alludes not only to the 12,000 media stories about its
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`program but to a sharp spike in Google® Internet searches for the phrase “podcast
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`serial” following the launch of its podcast.38 Applicant also measures its success in
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`terms of number of downloads, not dollars. Like most podcasts, Applicant’s SERIAL
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`podcast is available without charge, so in lieu of measuring consumer purchases, it
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`points to downloads as another way of measuring the acquisition of services by
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`consumers and the extent of their exposure to the marks. Applicant’s first season, in
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`the fall of 2014 was, in its words, “an immediate event in pop culture,” with daily
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`downloads that generally exceeded 200,000 and reached as high as 1.4 million.
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`During its second season, its daily downloads averaged 570,000 and reached as high
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`as 1.7 million. As of September 21, 2016, episodes of Applicant’s SERIAL podcast
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`had been downloaded over 172 million times in the United States. Throughout its
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`first two seasons, it ranked as the number one podcast on iTunes®, the media source
`
`of Applicant’s downloads.39
`
`The Examining Attorney acknowledges that “Applicant provided evidence of high
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`sales figures in the form of number of downloads of applicant’s ongoing audio
`
`
`38 Applicant’s brief p. 16, 7 TTABVUE 19, Affidavit of Ira Glass, ¶ 11, Aug. 10, 2015 Response
`to Office Action TSDR p. 20.
`39 Applicant’s brief p. 17, 18 n.3, 7 TTABVUE 20-21; Affidavit of Ira Glass ¶¶ 6-8, Aug. 10,
`2015 Response to Office Action TSDR p. 22; Affidavit of Elise Bergerson ¶¶6-8, March 1, 2016
`Response to Office Action TSDR pp. 8-9; Affidavit of Elise Bergerson ¶ 5, Sept. 22, 2016
`Response to Office Action TSDR p. 10.
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`Serial Nos. 86454420, 86454424, 86464485
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`program,” but argues that extensive figures of this sort demonstrate the commercial
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`success of its services, not consumer recognition of its mark for those services.40 With
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`respect to the standard character mark SERIAL, we agree. Evidence of the
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`commercial success of a product or service does not necessarily also mean that the
`
`consuming public perceives the mark used in connection with such products or
`
`services as primarily a source-indicator. See, e.g., In re Bongrain Int’l (Am.) Corp.,
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`894 F.2d 1316, 3 USPQ2d 1727, 1729 (Fed. Cir. 1990) (“The Board likewise ruled
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`correctly that appellant’s evidence as to acquired distinctiveness or secondary
`
`meaning was insufficient