Fullscreen, Inc.Download PDFTrademark Trial and Appeal BoardMar 31, 2016No. 85951468 (T.T.A.B. Mar. 31, 2016) Copy Citation This Opinion is Not a Precedent of the TTAB Hearing: February 23, 2016 Mailed: March 31, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Fullscreen, Inc. _____ Serial Nos. 85951468 and 85951513 _____ Julia Spoor Gard, Olivia M. Fleming, Caitlin R. Brandon and Felicia J. Boyd of Barnes & Thornburg LLP for Fullscreen, Inc. Khanh M. Le, Trademark Examining Attorney, Law Office 116, Christine Cooper, Managing Attorney. _____ Before Wellington, Shaw and Adlin, Administrative Trademark Judges. Opinion by Adlin, Administrative Trademark Judge: Fullscreen, Inc. (“Applicant”) seeks Principal Register registrations for the mark FULLSCREEN, in standard characters and the form shown below for the following services: promotional and distribution services in the field of audio, video, digital, and multimedia entertainment content; Serial Nos. 85951468 and 85951513 2 production and creation of advertising materials in the nature of films, videos, movies, audio recordings, and music recordings; electronic advertising media production services, namely, film, video, music, and digital content production; online advertising services; talent management; talent development services, namely, providing networking opportunities for persons seeking careers in the field of entertainment in International Class 35; entertainment services in the nature of the development, creation, design, production, postproduction, and distribution of audio, video, digital, and multimedia entertainment content; entertainment services, namely, multimedia program series in a variety of genres, namely sports, fashion, food comedy, action, adventure, dance, music, gaming, and popular culture, distributed via various platforms across multiple forms of transmission media; production and creation of entertainment in the nature of films, videos, movies, audio recordings and music recordings; electronic entertainment media production services, namely, film, video, music, and digital content production; online digital video, audio and multimedia entertainment publishing services; talent development services, namely, providing training and mentorship in the fields of singing and acting for persons seeking careers in the field of entertainment in International Class 41; and design of multi-channel computer networks for delivery via the internet, wireless networks and mobile networks in International Class 42.1 Because she found that the term FULLSCREEN is merely descriptive of Applicant’s services, the Examining Attorney refused registration of the standard character mark in the ‘468 Application under Section 2(e)(1) of the Trademark Act, 15 U.S.C. 1 Application Serial Nos. 85951468 (the “‘468 Application”) and 85951513 (the “‘513 Application”), respectively, each filed June 5, 2013 based on first use dates of April 2011. The ‘513 Application includes this description of Applicant’s design mark: “The mark consists of a shaded rectangle with a small rectangle unshaded in the lower left quadrant, followed by the word FULLSCREEN.” As explained below, the Examining Attorney ultimately withdrew the refusals with respect to the services listed in strikethrough text. Serial Nos. 85951468 and 85951513 3 § 1052(e)(1), and refused registration of the design mark in the ‘513 Application absent a disclaimer of the term FULLSCREEN. After the refusals became final, Applicant appealed, Applicant and the Examining Attorney filed briefs and the appeals were consolidated. In her Appeal Brief, the Examining Attorney withdrew the refusals in part, specifically with respect to: (1) “talent development services, namely, providing training and mentorship in the fields of singing and acting for persons seeking careers in the field of entertainment” in Class 35; (2) “talent development services, namely, providing training and mentorship in the fields of singing and acting for persons seeking careers in the field of entertainment” in Class 41; and (3) the services in Class 42. The services to which the refusals still apply, and which remain subject to this appeal, are set forth in plain text above (the “Refused Services”), while the services for which the refusals were withdrawn are presented in strikethrough text. The Record The Examining Attorney relies on a Wiktionary definition of the composite term FULL SCREEN as meaning “Of a window occupying all the available displayable surface of a screen.” Office Action of September 19, 2013 (printout from “Wiktionary.org”).2 She also relies on third-party and media uses of the term “full- screen” (or “full screen”) in the context of advertising, entertainment and distribution services, including: A December 13, 2013 Milwaukee Journal Sentinel article states: “They’ll offer businesses the chance to test tTap’s 2 Citations are to the record in the ‘468 Application. Serial Nos. 85951468 and 85951513 4 effectiveness with free minicampaigns of 10,000 impressions. The regular rate will be $6 per thousand impressions, or viewings – a premium price for mobile but one tTap thinks is justified by full-screen advertising that will be the first thing users see on their phone.” A October 8, 2013 Pittsburg Post-Gazette article entitled “Pros and Cons of Chromecast” states “IF you go to a TV network website and play a program and then try to cast that image, it might work. But you might also get a message saying you do not have permission to cast this content or when you switch the image to full screen on your computer, the TV picture disappears.” A July 25, 2013 Columbus Ledger-Enquirer (Georgia) live video link states “Watch the game in the video box below or click here to watch the game in full screen mode.” A July 16, 2013 New York Business Journal article entitled “Will Online Advertisers Be Happy in Vox Media’s ‘Fishtank’?” states “Vox, which publishes SB Nation, Polygon and The Verge, recently engineered ‘Fishtank,’ which presents readers with full-screen advertisements as they scroll through content.” A May 13, 2013 Denver Post article states “The toughest thing about Perfect Dog is the relentless stream of advertising, including full-screen pop-ups.” A February 3, 2012 San Francisco Chronicle article entitled “New App ShowYou Shows Up YouTube” states “Any time you see something that looks interesting, just tap and the video will enlarge and begin to play. Tap one button to make the video run full screen, and another to stream it to an Apple TV using AirPlay.” An April 26, 2011 USA Today article states “Be aware of some full-screen advertisements – from the likes of Citrix and America’s Natural Gas Alliance –that’ll pop up when you first stream audio.” An April 20, 2011 Deseret Morning News (Salt Lake City) article states “The department website, along with BYU- TV’s Internet product, will feature full screen, high Serial Nos. 85951468 and 85951513 5 definition streaming, along with already documented worldwide broadcasting capability via satellite and cable companies.” An April 23, 2010 Salt Lake Tribune article states “The new site … features interactive user interfaces, content ratings, social sharing, multiple paths to access content, full-screen videos, immersive maps, large backgrounds and booking and planning tools.” An April 9, 2010 DMNews article entitled “Apple Unveils iAd Mobile Advertising Platform” states “It will give advertisers the ability to run full-screen video and interactive ad content without requiring the user to navigate away from an app.” An April 9, 2010 Investor’s Business Daily article states “With the iAd platform, advertising can show off interactive ad content and full-screen video without ever leaving the application.” A March 31, 2010 Providence Journal article states “Imagine being able to stream full-screen, high-definition movies to your computer or mobile device on demand without the stops and starts or the fuzzy picture that plague Internet video today.” A November 12, 2009 Philadelphia Daily News article states “In any case, the reputation of his ‘Prisoner,’ which is currently available for full-screen streaming at amctv.com, remains safe.” A June 18, 2009 Kansas City Star article states “Simmons told me she has been experimenting with video encoding of KCPT programs so that the picture is optimal for the Web. It looks sharp even in full-screen mode.” An April 7, 2009 Grand Rapid Press article states “Users can stream full-screen, nearly commercial-free episodes of such shows as ‘24’ and ‘Prison Break’ without hiccups, even with slower speeds of DSL, after downloading a small browser add-on.” Serial Nos. 85951468 and 85951513 6 A December 8, 2008 RCR Wireless News article states “The company’s AdWrap technology takes full-screen images, video content and scrolling banners and automatically inserts them into mobile video games and applications.” An October 21, 2008 Daily Variety article states “The New York Times reviewed the film both in print and online; A.O. Scott praised the full-screen high-def streaming available on the site.” An April 10, 2008 Los Angeles Times article states “Payne said the tournament is reaching out to a younger audience by televising the par-three contest for the first time and expanding its online content to include full-screen streaming video, photo sharing and blogs.” A January 7, 2008 Seattle Times article states “The Olympics site, www.nbcolympics.com, is expected to offer some 2,200 hours of live event coverage from the games with up to 30 streams of full-screen content to choose from.” An August 24, 2007 San Diego Union-Tribune article states “The company uses peer-to-peer software to deliver video, which it says it allows it to stream and download full- screen, high quality shows.” A May 18, 2007 Hollywood Reporter article states “The new programming alliances … further the company’s strategy to provide full-screen video content from Hollywood studios, TV networks and independent producers directly to consumers.” A March 3, 2007 Chicago Sun Times article entitled “TV On Cells Has Come Long Way: MobiTV Offers a Fun And Simple Solution For People Seeking TV On the Run” states “I often opted to view content in full-screen mode, which, in 10 seconds, alters the image to take over the whole screen in horizontal view.” A January 25, 2007 Orange County Register article quotes an interviewee as stating “What we’re doing uniquely is to focus on high-definition content – full screen, not just iPod screens.” Serial Nos. 85951468 and 85951513 7 A December 28, 2006 Brandenton Herald article states “The site features a gallery of full-screen, high- resolution images and streaming, full-screen, on- demand video.” A November 1, 2006 Seattle Post-Intelligencer article entitled “Internet Closer to TV with Startup” states “GridNetworks, a two-year old Seattle startup led by Internet veterans Jeff Payne and Bo Wandell, today plans to unveil a new content delivery service that streams full- screen ‘DVD-quality’ video on behalf of entertainment companies.” A September 6, 2006 Knight-Ridder Tribune Business News article entitled “A-B Will Launch Online Entertainment Network,” states “The material will include both original and mainstream programming, and Bud TV’s desktop application will allow users to view the content in full-screen DVD quality, the company said Tuesday.” A December 5, 2005 Florida Time-Union article states “The software (called Veoh) is available for Macs and PCs and enables those with high-speed connections to watch full screen video content on a virtual television network.” A September 23, 2002 Network World article states “Whether the original content is displayed full-screen or in a single pixel depends on how much the content provider or subscriber is willing to pay.” A January 22, 2001 Daily Variety article states “On2’s software allows users to view high-resolution, full- screen video streamed over the Internet.” A September 25, 2000 Network World article states “Digital Pipe uses its own servers and some proprietary technology to ease the bandwidth burden of video streaming and claims to deliver full-screen, TV-style video to users.” A September 4, 2000 Network World article states “But the highlight is billed to be the end-all be-all of streaming: full-screen, full-motion video.” Serial Nos. 85951468 and 85951513 8 A November 24, 1999 Boston Herald article states “Gamesville is pushing the Internet advertising envelope with full-screen commercials that often include video.” A February 22, 1999 Computerworld article quotes a marketing director as stating “They have taken Web advertising to the next level – the full-screen format lets an advertiser do much more.” A January 2, 1999 New York Post article states “Game players on the site (www.gamesville.com) get to play eight minutes of games for free and then receive two minutes of full-screen web advertisements.” An October 18, 1998 Atlanta Journal and Constitution article states And while you’re waiting, you have to look at a full-screen advertisement for Dep hair care products. Yuck.” A June 1, 1998 Network World article states “Hard as it is to believe, you may someday come to miss those Internet banner ads. That’s because a start-up is about to inflict upon cyberspace new technology that enables advertisers to run full-screen Internet ads.” A June 2, 1997 New York Times article states “As a result, the reckless surfer who types micorsoft.com will connect to a Web page that is programmed to splash a 15-second full- screen advertisement in the browser window before referring him to Microsoft’s web site.” A May 11, 2011 Kansas City Star article states “In revealing the acquisition by Microsoft, Skype executives said they were developing full-screen advertising to be shown either during calls or before connections are made. In fact, analysts see it as a way to draw more customers to its various advertising platforms, like the Bing search engine that still trails far behind Google.” A June 1, 2008 San Antonio Express-News article states “There are a few details missing, mostly nerd stuff, such as the fact that since Pixar films are entirely digital, they can Serial Nos. 85951468 and 85951513 9 easily create widescreen and full-screen versions without losing (as much) detail as conventional films do for home video release.” An August 7, 2000 Washington Times article quotes the senior vice president of KMGI.com as stating “Producing video using animation allows us to create engaging full- screen video that is cheaper to produce than video for television.” An April 8, 1999 New York Times article entitled “A Graphics Card is Putting the Home DVD Into Range” states “What makes the $170 card noteworthy is that it is the first retail product to include new technology that makes it much more affordable to compress digital video into MPEG form, the standard for such files. That has been a very expensive process; the cost of creating full-motion, full screen digital video images has been thousands of dollars.” An April 13, 1998 Star-Ledger (Newark, NJ) article entitled “Internet Advertising Tripled in ’97, Nears Billion Dollar Mark,” states “Intel’s Intercast technology allows television programmers to create full-screen interactive programming by combining TV with digital enhancements.” A June 24, 1993 San Francisco Chronicle article states “For example, Radius Inc., a San Jose-maker of computer graphics equipment introduced yesterday a product that will make it possible to produce full-motion, full-screen, digital video movies on Macintosh computers comparable in quality to any shot on film or video tape.” A May 22, 2008 hollywoodreporter.com article entitled “ABC Upgrades Online Video Player” states “Among the bells and whistles for the broadcaster’s online destination are full-screen viewing, closed captioning and the ability to send video links that can be embedded on blogs and social networks.” A January 7, 2008 Telegram & Gazette (Worcester, MA) article states “VSM Cinema presents films (short documentaries, dramas, comedies and animation) that are Serial Nos. 85951468 and 85951513 10 streamed online in high-resolution and full-screen format.” An October 21, 1999 Dallas Morning News article states “The concert promotes the launch of pixelon.com, billed as the first online broadcast network with full-screen, TV-quality video and audio.” A September 21, 1999 Daily Variety article states “Kankaris, which broadcasts more than 60 full-screen, full-length films online for free, will retain its current corporate and hardware/technical division offices in nearby Costa Mesa.” Office Actions of July 29, 2014 and September 19, 2013. Applicable Law A mark is deemed to be merely descriptive, within the meaning of Section 2(e)(1), if it immediately conveys knowledge of a quality, feature, function, characteristic or purpose of the services for which it is used. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (quoting In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009)); and In re Abcor Development, 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). A mark need not immediately convey an idea of each and every specific feature of the services in order to be considered merely descriptive; rather, it is sufficient that the mark describes one significant attribute, function or property of the services. In re Chamber of Commerce of the United States of America, 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); and In re MBAssociates, 180 USPQ 338 (TTAB 1973). Whether a mark is merely descriptive is determined not in the abstract, but in relation to the services for which registration is sought, the context in which it is being used on or in Serial Nos. 85951468 and 85951513 11 connection with the services, and the possible significance that the mark would have to the average purchaser of the services because of the manner of its use. In re Bright- Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). It is settled that “[t]he question is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods or services are will understand the mark to convey information about them.” In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002). When two or more merely descriptive terms are combined, the determination of whether the composite mark also has a merely descriptive significance turns on whether the combination of terms evokes a new and unique commercial impression. If each component retains its merely descriptive significance in relation to the services, the combination results in a composite that is itself merely descriptive. See e.g., In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004) (PATENTS.COM merely descriptive of computer software for managing a database of records that could include patents, and for tracking the status of the records by means of the Internet); In re Petroglyph Games, Inc., 91 USPQ2d 1332 (TTAB 2009) (BATTLECAM merely descriptive for computer game software); In re Carlson, 91 USPQ2d 1198 (TTAB 2009) (URBANHOUZING merely descriptive of real estate brokerage, real estate consultation and real estate listing services); In re Tower Tech, 64 USPQ2d at 1314 (SMARTTOWER merely descriptive of commercial and industrial cooling towers); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS merely descriptive of computer programs for use in developing and Serial Nos. 85951468 and 85951513 12 deploying application programs); In re Putman Publishing Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ONLINE merely descriptive of news and information services in the food processing industry). Under Section 6(a) of the Act, “[t]he Director may require the applicant to disclaim an unregistrable component of a mark otherwise registrable,” such as a component which is merely descriptive under Section 2(e)(1). Failure to comply with a disclaimer requirement is a basis for refusing registration. See In re Slokevage, 441 F.3d 957, 78 USPQ2d 1395, 1399-1400 (Fed. Cir. 2006); In re Stereotaxis, Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005). Analysis The evidence of record establishes that the term FULLSCREEN is merely descriptive of the Refused Services. In fact, with respect to the distribution of video, digital and multimedia entertainment content in Class 35 and the development, creation, production and distribution of video, digital and multimedia entertainment content in Class 41, the record reveals that being viewable in “full screen” format is a common, desirable feature. For example, the April 7, 2009 Grand Rapid Press article indicates that features of a browser add-on include the ability to stream episodes of television shows (which are forms of video and digital entertainment such as Applicant develops and distributes) in “full-screen” format, commercial-free. Several articles address the desirability of streaming sports content (a type of video and digital entertainment such as Applicant develops and distributes) in “full-screen” format. And the May 22, 2008 hollywoodreporter.com article includes “full-screen Serial Nos. 85951468 and 85951513 13 viewing” of television shows as among the “bells and whistles” of a broadcast network’s online destination. Similarly, the evidence reveals that a common feature of advertising materials in the nature of films, videos and digital content, such as Applicant claims to produce and create in its Class 35 identification of services, is that the advertising content is viewable in “full screen.” This feature is revealed to be highly desirable for advertisers, even if sometimes off-putting to the intended audience.3 For example, the December 13, 2013 Milwaukee Journal Sentinel article indicates that tTap will charge a “premium price for mobile” advertising, which it believes is “justified by full- screen advertising ….” Multiple articles about Apple’s iAd advertising platform reveal that one of its features is its ability to “run full-screen video” (such as the advertising video Applicant produces and creates), without leaving an app. Furthermore, according to the September 23, 2002 Network World article, content displayed in “full-screen” format commands a higher price than content displayed on less than a “full screen,” which reveals that being displayed in “full screen” is a valuable quality or characteristic of content such as the entertainment and advertising content Applicant produces, creates and distributes. In fact, another Network World article, from September 4, 2000, indicates that “full-screen, full- motion video” is the “end-all be-all” of streaming, with streaming being a method of 3 October 18, 1998 Atlanta Journal and Constitution article (including this description of a full-screen advertisement: “Yuck.”); June 1, 1998 Network World article (indicating that as a result of full-screen advertisements “you may someday come to miss those Internet banner ads.”). Serial Nos. 85951468 and 85951513 14 distributing video and digital content, which is encompassed by Applicant’s Refused Services. Similarly, a marketing director interviewed in the February 22, 1999 Computerworld article refers to “full-screen” advertising as the “next level” of Web advertising. Applicant effectively concedes the point. It introduced a printout from “cnbc.com” which includes a quote from its Chief Executive Officer, who stated “When you watch a video in full screen, it expands to fill the screen and receive your undivided attention. Our mission at Fullscreen is to empower the next generation of video creators.” Applicant’s Request for Reconsideration Ex. G; Applicant’s Reply Brief at 5. Obviously, when video, digital or other types of content, and perhaps especially advertising content, is able to “receive your undivided attention,” it becomes more valuable to the producers, creators and distributors of the content. Where, as here, a proposed mark is descriptive of a desirable characteristic of the goods or services for which it is used, it may be found merely descriptive. In re National Rent A Fence, Inc., 220 USPQ 479, 480 (TTAB 1983) (finding NATIONAL RENT A FENCE, with RENT A FENCE disclaimed, to be merely descriptive of fence rental services because “the national scope of applicant’s services is a desirable characteristic of them. Another national corporation renting fences … could find it greatly advantageous to deal with one nationwide fence rental company … Applicant itself emphasizes the significance of the national aspect of its business …”); In re Allen Hollander Co., Inc., 170 USPQ 422 (TTAB 1971) (finding EASY-PEEL merely descriptive of labels, tags, including labels and tags bearing adhesive, because it Serial Nos. 85951468 and 85951513 15 “immediately describes a desirable characteristic of the goods to which it is applied). See also, In re Boston Beer Co., L.P., 47 USPQ2d 1914, 1920-21 (TTAB 1998), aff’d, 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) The record also reveals that Applicant’s competitors need to use the term “full screen.” For example, the February 3, 2012 San Francisco Chronicle article entitled “New App ShowYou Shows Up YouTube” is apparently about a YouTube competitor, and indicates that by tapping a single button the YouTube competitor’s app will play a video in “full screen” format. Applicant’s original specimen makes clear how closely Applicant’s services are tied to YouTube, as it bears the heading “We are building the global video network of the future. On YouTube.” In other words, just as the ShowYou app is a YouTube competitor, it is, by extension, also one of Applicant’s competitors. A number of Applicant’s other competitors also use “full screen” in connection with Applicant’s Refused Services, such as producing and distributing entertainment and advertising content in video and digital formats. See e.g., July 25, 2013 Columbus Ledger-Enquirer article; April 10, 2008 Los Angeles Times article; January 25, 2007 Orange County Register article; August 7, 2000 Washington Times article. Where, as here, an applicant’s competitors have a need to use the term in question to describe their similar goods or services, a mark may be found to be merely descriptive. In re Boston Beer, 47 USPQ2d at 1920-21 (“These words, as well as such other expressions as ‘Best Car in America,’ ‘Best Hotel in the State’ and ‘Best Restaurant in Town,’ for example, are slogans which can be referred to as mere ‘puffery.’ Such claims of superiority should be freely available to all competitors in any given field to refer to Serial Nos. 85951468 and 85951513 16 their products or services ….”); In re Abcor Development, 200 USPQ at 217 (“The major reasons for not protecting [merely descriptive] marks are … to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products.”); see also, Saint-Gobain Corp. v. 3M Co., 90 USPQ2d 1425 (TTAB 2007). This case is in some ways analogous to In re Tokutake Industry Co., 87 USPQ2d 1697 (TTAB 2008). There, we affirmed a refusal to register AYUMI & Design for footwear, because AYUMI means “walking, a step” in Japanese, and the applicant’s goods, footwear, could encompass footwear designed for walking. In Tokutake, we stated that “[n]othing prevents the term ‘ayumi’ from being viewed as a noun that merely describes the activity for which the shoes are particularly designed, such as walking, running, soccer, basketball, etc.” Id. at 1701. Similarly, in this case, consumers could view the term “fullscreen” as describing the format in which Applicant’s video/digital/multimedia entertainment and advertising content is displayed. Conclusion Applicant is correct that doubt must be resolved in its favor. However, we have no doubt. The term “fullscreen” is merely descriptive of a desirable feature of the entertainment and advertising content which Applicant creates, produces and/or distributes. Accordingly, the refusal to register Applicant’s standard character mark Serial Nos. 85951468 and 85951513 17 and the disclaimer requirement imposed on the application to register Applicant’s design mark are both affirmed. Decision: The refusal to register the standard character mark in the ‘468 Application for the Refused Services is affirmed. The refusal to register the design mark in the ‘513 Application for the Refused Services in the absence of a disclaimer of FULLSCREEN is affirmed. This decision with respect to the ‘513 Application will be set aside if, within thirty days of the mailing date of this order, Applicant submits to the Board a proper disclaimer of FULLSCREEN. Trademark Rule 2.142(g). The disclaimer should be worded as follows: “No claim is made to the exclusive right to use FULLSCREEN apart from the mark as shown.” Both applications will proceed to registration with respect to “talent management; talent development services, namely, providing networking opportunities for persons seeking careers in the field of entertainment” in Class 35; “talent development services, namely, providing training and mentorship in the fields of singing and acting for persons seeking careers in the field of entertainment” in Class 41; and the services in Class 42. Copy with citationCopy as parenthetical citation