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By Tamlin H. Bason
The term Country Music Association is neither generic nor merely descriptive, and thus a business owner that has continuously used the phrase to market its product since 1958 is entitled to register the mark in International Class 35, the Trademark Trial and Appeal Board ruled Oct. 25 (Country Music Association Inc., T.T.A.B., Nos. 78906900 and 78901341, 10/25/11).
The board reversed the examining trademark attorney's refusal to register the mark, which was based on a finding that the mark was generic as it related to the service identified and thus could not be registered under Section 2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1). The board concluded that the term was not used to describe the type of services being offered by the applicant, but rather was used either for “an association comprised of country music professionals or promoting the country music industry.” However, the board ordered the applicant to file a disclaimer as to the word “association.”
The County Music Association Inc. began using the phrase Country Music Association in 1958. Since that time, the CMA has operated a television network, hosted annual music awards, and promoted country music through various other means.
In 2006, the CMA applied to register Country Music Association as a mark for “association services” in International Class 35. The CMA also sought the registration of a logo that it first used in commerce in 1968. The logo consists of the letters “CMA” in cursive format, placed above the phrase “Country Music Association,” which is spelled wholly with capital letters.
The examining attorney refused to register both marks, concluding that the term was generic as used by the CMA.
For the first mark, the examining attorney determined that there was insufficient evidence to show that the mark had acquired distinctiveness—a showing that would have been necessary in order to find the mark registrable under Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f), which allows for registration of a mark that has acquired distinctiveness.
As to the second mark, the examining attorney asked CMA to disclaim the phrase “Country Music Association” pursuant to Section 6(a) of the Trademark Act, 15 U.S.C. § 1056(a). CMA refused to disclaim the phrase and the registration was refused.
CMA appealed the refusal of both applications.
First, the board cited Cold War Museum Inc. v. Cold War Air Museum Inc., 586 F.3d 1352, 92 USPQ2d 1626 (Fed. Cir. 2009), for the proposition that an applicant concedes that a mark is descriptive when it seeks registration under Section 2(f).
Thus, the board turned its attention to whether the mark was generic. The board determined that it was not.
Administrative Trademark Judge Angela Lykos said, “A mark is a generic name if it refers to the class or category of goods for which it is used.”
Citing H. Marvin Ginn Corp. v. International Association of Fire Chiefs Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986), the board noted a two-step process for determining whether “members of the relevant public primarily use or understand the term sought to be registered to refer to the category or class of goods in question”:
• Determining the type of goods or services in question; and
• Determining whether the relevant public understands the term to refer to that class of goods or services.
The examining attorney narrowly defined the type of services as “association services related to country music.” CMA argued that such a narrow definition would mean that “any type of association would be generic for the subject matter of the services.” Instead, CMA urged the board to recognize that the services being offered were “association services.”
In CMA's application it defined it services as “association services, namely, promoting country music and promoting the interests of country music entertainers and the country music recording industry.” The board determined that this description, coupled with CMA's identification of itself on its website as “the first trade organization to ever promote a type of music,” was sufficient to establish the broader definition of service.
Thus, the board rejected the examining attorney's narrow definition regarding the first prong of the Marvin Ginn test.
The second prong of the test required the board to determine whether the relevant public understood the phrase Country Music Association “as primarily referring to association services which promote country music and the interest of professionals in the country music recording industry.”
On appeal, the parties agreed that the relevant community consisted of “people that listen to and/or are in some way involved in country music.”
To prove that the term was generic the examining attorney introduced numerous third-party usages of the “country music association” phrase. These uses generally combine the phrase with a descriptive or geographical term, such as “The Lesbian and Gay Country Music Association,” the “Christian Country Music Association,” and the “Kentucky Country Music Association.”
The examining attorney argued that the prevalence of the phrase in the names of other associations proved that it was generic. The board was not convinced.
As an initial matter, the board said that the contested mark was a phrase and therefore should be analyzed under the test set forth in In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999). American Fertility held that the Patent and Trademark Office could not support a finding of genericness simply by showing that each word in a phrase is generic.
In In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001), the U.S. Court of Appeals for the Federal Circuit explained that when the proposed mark is a phrase “the board cannot simply cite definitions and generic uses of the constituent terms of a mark; it must conduct an inquiry into the meaning of the disputed phrase as a whole,” (internal citation omitted).
Dial-A-Mattress noted that when looking at the relevant public's understanding of an entire phrase, the board may consider purchaser testimony, consumer surveys, newspapers, and trade journals, among other things.
The board said that evidence of third- party use of the phrase did not prove that the term was generic. For one thing, the board noted that internet and Lexis/Nexis searches revealed that in nearly all third-party uses the phrase is capitalized, thus indicating that the phrase is used as a trade or brand name.
The board also noted that the third-party uses, particularly on the internet, were “relatively obscure.” Most of the websites that used the phrase in connection with another geographic or descriptive identifier receive only a few hundred hits per month, whereas CMA's website received over 15 million hits in 2007.
“The comparative obscurity of the third-party uses raises doubt about whether the relevant public will perceive the phrase as generic or as an element of various trade names,” the board said.
A “Teflon” consumer survey conducted by Gerald L. Ford of the marketing firm Ford Bubala & Associates strongly supported CMA's position, the board found.
In a “Teflon survey,” a participant is taught the difference between common names and brand names and then asked about the mark in question.
Ford's survey, which was conducted only among persons who made up the relevant public group, resulted in 85 percent of the respondents identifying Country Music Association as a brand name.
The board said that these results have “probative value in applicant's favor.” The court then concluded that the PTO had not met its burden of demonstrating that the mark was generic. As a result, the board reversed the examining attorney's refusal to register both marks.
However, the refusal was affirmed with respect to the word “association” because the board said that the word, as it was used by CMA, was generic.
Administrative Trademark Judges Peter W. Cataldo and Ellen J. Seeherman joined the opinion.
Country Music Association Inc. was represented by Robert A. Rosenbloum of Greenberg Traurig, Atlanta.
Opinion at http://pub.bna.com/ptcj/78906900Oct25.pdf
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