Broadcast Architecture, Inc.

Trademark Trial and Appeal Board

Dec 12, 2008

No. 77153461 (T.T.A.B. Dec. 12, 2008)

Mailed: December 12, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Broadcast Architecture, Inc.
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Serial No. 77153461
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Pamela B. Huff of Cox Smith Matthews Incorporated for Broadcast
Architecture, Inc.

Gina M. Fink, Trademark Examining Attorney, Law Office 109 (Dan
Vavonese, Managing Attorney).
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Before Bucher, Holtzman and Rogers, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Applicant, Broadcast Architecture, Inc., seeks to register
the mark SMOOTH JAZZ TOP 20 COUNTDOWN (in standard character
form) for "radio broadcasting services" in Class 38; and "radio
programming services" in Class 41.
The application was filed on April 10, 2007 based on
applicant's assertion of a bona fide intention to use the mark in
commerce. Applicant filed an amendment to allege use, together
with a specimen of use, on September 17, 2007, asserting dates of
THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Ser No. 77153461
2
first use and first use in commerce for both classes on June 9,
2007.1
The examining attorney accepted the specimen submitted with
the amendment to allege use as to the "radio programming
services" in Class 41, but refused registration of the mark as to
the Class 38 "radio broadcasting services" under Sections 1, 2
and 45 of the Trademark Act on the ground that the specimen does
not show use of the mark for the services as required by
Trademark Rules 2.56 and 2.76. Applicant subsequently submitted
additional specimens, none of which, according to the examining
attorney, show use of the mark for the Class 38 services.
When the refusal was made final, applicant appealed. Briefs
have been filed.
Section 1 of the Trademark Act and Trademark Rule 2.76(b)(2)
provide that an amendment to allege use must be accompanied by a
specimen of the mark as actually used in commerce. Trademark
Rule 2.76(b)(2) refers to Trademark Rule 2.56 for the
requirements for specimens, which in turn requires a specimen
showing the mark as actually used in the sale or advertising of
the identified services. See Trademark Rule 2.56(b)(2).

1 In response to the examining attorney's initial refusal to register
the mark under Section 2(e)(1) of the Trademark Act, applicant amended
the application to seek registration of the mark, in part, under
Section 2(f) of the Act. Specifically, applicant claims acquired
distinctiveness as to "TOP 20." After this amendment, the Section
2(e)(1) refusal was withdrawn. The terms SMOOTH JAZZ and COUNTDOWN
have been disclaimed.
Ser No. 77153461
3
The question of whether a designation functions as a mark
for the identified services is determined based on the specimens
and other information of record. In order to show service mark
use, the specimen must show use of the mark in a manner that
would be perceived by the relevant public as identifying
applicant's services and indicating their source. See in re
Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456 (CCPA
1973).
The original specimen submitted with the amendment to allege
use (shown below) is described by applicant as a "screen shot
from Applicant's website." The top section of the page displays
"SMOOTH JAZZ TOP 20 COUNTDOWN" and indicates that the program is
hosted by Allen Kepler. A "WHERE TO LISTEN" link is prominently
displayed to the right of the program name. Additional links in
that section will take users to the "HOST" and "OTHER COOL SHOWS"
pages of the website.
Ser No. 77153461
4

The next specimen, submitted on October 29, 2007, is a
"WHERE TO LISTEN" page for the program "SMOOTH JAZZ TOP 20
COUNTDOWN with Allen Kepler." This page, shown below, notifies
listeners of the various radio stations, such as "WNUA 95.5
Smooth Jazz," on which the program can be heard, along with the
day and time the program will be aired. Applicant explains that
these radio stations are applicant's licensees, and that mark is
being used by these stations under applicant's direction and
control.
Ser No. 77153461
5

Several additional specimens were submitted with applicant's
request for reconsideration on February 11, 2008. One specimen
consists of a "WHERE TO LISTEN" page with additional station
listings, including "KKSF 103.7" and "The Breeze 97.9 KBZN." The
specimens which follow are advertisements from the websites of
these two radio stations.
Ser No. 77153461
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The "KKSF" website announces that the program "SMOOTH JAZZ
TOP 20 COUNTDOWN with Allen Kepler" can be heard on that station
"Every Sunday Afternoon from 4 to 6pm," and states in part:
The Smooth Jazz Top 20 Countdown features the hits
each week, based on monitored airplay on stations
across the U.S. Hosted by Allen Kepler, there are
artist interviews and commentary from the likes of
George Benson, John Legend..."

"The Breeze" website, shown below, announces its "Weekend
Programming" and features the "Sunday Lineup" of "some of the
most popular" programs. The website identifies the program
Ser No. 77153461
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"Smooth Jazz Top 20 Countdown with Allen Kepler" along with other
weekend programs including "Quiet Music" and "Jazz Trax."

The last specimen, submitted by applicant on May 23, 2008
with its second request for reconsideration, is a page from the
website of radio station "Smooth Jazz 95.5 KYOT," showing use of
the mark in a manner similar to the radio station advertisements
above.
Ser No. 77153461
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We agree with the examining attorney that, as used on each
of the specimens of record, the designation SMOOTH JAZZ TOP 20
COUNTDOWN would be perceived as a mark identifying a radio
program, and not as a mark identifying Class 38 "radio
broadcasting services."2
The program SMOOTH JAZZ TOP 20 COUNTDOWN is indeed
"broadcast" over the radio. However, this activity in itself is
not the equivalent of a "broadcasting" service, at least for
purposes of proper classification. The U.S. Patent and Trademark
Office recognizes the distinction between the two types of
services by classifying them in two separate classes. See
Acceptable Identification of Goods and Services Manual which
lists, for example, "entertainment, namely, a continuing [e.g.,
variety] show broadcast over television, satellite, audio, and
video media" in Class 41 (emphasis added) and "broadcasting of
radio programs" in Class 38. Moreover, this classification is
based on the Nice Agreement Concerning the International
Classification of Goods and Services (9th ed. 2006),3 to which the
United States is a party, and "each of the countries party to the

2 The question of whether designations other than the mark for which
registration is sought, such as "Smooth Jazz" or "Smooth Jazz Top 20,"
are used on the specimens to identify broadcasting services, is not
before us.

3 The full title of the agreement is Nice Agreement Concerning the
International Classification of Goods and Services for the Purposes of
the Registration of Marks.

Ser No. 77153461
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Nice Agreement is obliged to apply the Nice Classification in
connection with the registration of marks." (Preface to Nice
Classification.)
As stated in the "explanatory notes" of the Nice
Classification, Class 38 "includes mainly services allowing at
least one person to communicate with another by a sensory means"
(emphasis added); and this class includes, in relevant part,
"services which consist essentially of the diffusion of radio or
television programmes." This is distinguished from Class 41
which, based on the Nice Classification, "covers mainly [inter
alia]... services intended to entertain or to engage the
attention"; and "includes, in particular: ...services having the
basic aim of the entertainment, amusement or recreation of
people."
With the above guidelines in mind, it seems clear that for
purposes of proper classification, Class 38 services involve the
means or medium of broadcasting, not the subject matter of the
broadcast. In this case, the mark is used on the specimens to
identify the subject matter of the broadcast. Every specimen
advertises SMOOTH JAZZ TOP 20 COUNTDOWN as the entertainment
provided by the radio stations, identifying the host of the
program, and informing the public as to when and where the
program can be heard. Based on the specimens, applicant is
providing, or is licensing others to provide, the radio program
Ser No. 77153461
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SMOOTH JAZZ TOP 20 COUNTDOWN, the "basic aim" of which is to
entertain the public.
Applicant states that it licenses the mark to others to use
in their radio broadcasting services and that "these radio
broadcasting services are conducted by Applicant's licensees
under Applicant's direction and control." Applicant contends
that because it licenses the mark to radio stations to use in
connection with the radio station's broadcasting services, this
use inures to applicant's benefit. Applicant maintains that
consumers viewing the advertisements, "which comprise references
to radio frequencies and broadcast times will immediately
understand that the mark is used in connection with radio
broadcasting services."
There is no question that applicant's licensees render
broadcasting services. The problem with applicant's argument is
that the mark SMOOTH JAZZ TOP 20 COUNTDOWN as it appears on the
specimens is not used by the licensees to identify their
broadcasting services. Rather, the mark is used by the licensees
in a manner that would be perceived by the listening audience as
identifying a program that is broadcast on their radio stations,
Ser No. 77153461
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which as discussed above is a Class 41 "entertainment" service,
not a Class 38 "broadcasting" service.4
In view of the foregoing, we find that the specimens do not
show use of SMOOTH JAZZ TOP 20 COUNTDOWN in commerce as a mark
for the Class 38 services.
Decision: The refusal to register as to Class 38 is
affirmed. The application will proceed in Class 41.

4 We are not saying that the mark could not be used on the same
specimen to identify both services, but only that in this case it is
not.