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A Precedential Decision – Is “SERIAL” Generic For Applicant’s Entertainment Services?

The Trademark Trial and Appeal Board (the “Board or the “TTAB”) issued this precedential decision at the end of March 2018, and it was a partial win for the Applicant. The Applicant, Serial Podcast LLC, filed three applications at the United States Patent & Trademark Office {“USPTO”), one word mark (standard characters) for SERIAL, and two similar special format marks containing the word “SERIAL” with each letter being placed in a black rectangle with rounded corners. The design marks were identical except one did not claim color as a feature of the mark, while the other featured yellow letters outlined in red. The services were identified as “entertainment in the nature of an ongoing audio program featuring investigative reporting, interviews, and documentary storytelling”, in all three applications. The Examining Attorney refused all three marks on the grounds that each mark is generic for the services identified, and if not generic, then merely descriptive and that applicant’s acquired distinctiveness claim was insufficient to overcome the refusal. See In re Serial Podcast, LLC, Serial Nos. 86454420, 86454424, 86464485 (March 26, 2018) [precedential].

To support the generic refusal the Examining Attorney submitted definitions for the term SERIAL. The meanings for the term SERIAL can be summarized as a story or other subject matter that is published or broadcasted in a series in separate parts. Applicant’s services include producing an ongoing audio program (a podcast) appearing in regular weekly installments. The first season of the podcast included 12 episodes, and ran for approximately two months. Examples of use of the term SERIAL were submitted into the record.

Applicant argued that there were numerous examples where SERIAL is used as an adjective, and therefore the use cannot be generic. However, the Board found this argument not to be persuasive. The Board held that use of a mark as an adjective can be generic as well. See Sheetz of Delaware, Inc. v. Doctor’s Associates Inc., 108 USPQ2d 1341 (TTAB 2013) [precedential]. In fact, the TMEP specifically states: “The expression ‘generic name for the goods or services’ is not limited to noun forms but also includes ‘generic adjectives,’ that is, adjectives that refer to a genus, species, category, or class of goods or services.”

Internet articles and websites were submitted into the record to show the term SERIAL being used both as a noun and an adjective. The examples demonstrated that the term SERIAL was categorically referring to ongoing audio programs that come from a variety of sources not a single source. There were numerous examples set forth in the record demonstrating that the term SERIAL referred to a category of services, and this was held to be persuasive evidence that it was a generic designation of those services. The Board concluded that the word mark SERIAL was generic for the applicant’s services.

Next the Board analyzed the composite logos for the SERIAL marks. A composite mark may be registered, even when the literal word taken alone may not. The design elements must make a separate impression on purchasers apart from the impression made by the words themselves. Most common geometric shapes when used as background for the display of words, typically will not be perceived as inherently distinctive. The Board found that the design elements here were not inherently distinctive. The applicant will face a very high burden of proof in this case. The reason for the high burden is that the literal term here has been held to be generic, and the design display has been found to be non-distinctive. In addition, the font (san serif) is nondescript. With all this in mind, the evidence submitted by the Applicant pertaining to consumer recognition as a source identifier was extremely persuasive.

The Board held that the two composite marks had achieved public recognition as  source identifiers. Third parties have created copies and parodies of the design elements. Saturday Night Live and Sesame Street included a parody about the podcast using the composite mark. There were other examples of unauthorized copying of the composite mark. The Board concluded that the Applicant met its burden of proving a prima facie case that the composite marks acquired distinctiveness. The refusals were reversed for the composite marks, but the Board affirmed the refusal for the word mark. The composite marks will proceed to registration, as long as the Applicant agrees to a disclaimer of the term SERIAL. If you wish to file a composite mark (words and a design element), please feel free to contact our office for a courtesy consultation.