Mana-Tee Concepts USA, LLC

Trademark Trial and Appeal Board

Aug 24, 2005

No. 76518416 (T.T.A.B. Aug. 24, 2005)

Mailed:
24 August 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Mana-Tee Concepts USA, LLC.
________

Serial No. 76518416
_______

Myron Amer of Myron Amer, P.C. for Mana-Tee Concepts USA,
LLC.

Josette M. Beverly, Trademark Examining Attorney, Law
Office 112 (Janice O’Lear, Managing Attorney).
_______

Before Bucher, Drost, and Walsh, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On May 21, 2003, Mana-Tee Concepts USA, LLC
(applicant) applied to register on the Principal Register
the mark SING-A-LONG in standard character form for karaoke
players in Class 9. The application (Serial No. 76518416)
alleges a date of first use and first use in commerce of
March 1, 2003.
The examining attorney initially refused registration
on the ground that the mark SING-A-LONG is merely
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE
TTAB
Ser. No. 76518416
2
descriptive of applicant’s goods. 15 U.S.C. § 1052(e)(1).
In its response of November 5, 2003, to the examining
attorney’s refusal, applicant amended the application to
seek registration on the Supplemental Register. After this
amendment, the examining attorney refused registration on
the ground that the mark was generic for the goods under
Section 23 of the Trademark Act. 15 U.S.C. § 1091.
After the refusal was made final, applicant filed a
notice of appeal.
In order for a mark to be generic, the Court of
Appeals for the Federal Circuit has held that: “The
critical issue in genericness cases is whether members of
the relevant public primarily use or understand the term
sought to be protected to refer to the genus of goods or
services in question.” H. Marvin Ginn Corp. v. Int’l
Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ
528, 530 (Fed. Cir. 1986). Ginn goes on to explain that:
Determining whether a mark is generic therefore
involves a two-step inquiry: First, what is the genus
of goods or services at issue? Second, is the term
sought to be registered or retained on the register
understood by the relevant public primarily to refer
to that genus of goods or services?

Id.

The examining attorney argues that the “proposed mark
SING-A-LONG is used by others to commonly refer to a device
Ser. No. 76518416
3
that is designed for sing alongs” (Brief at 5) and that the
“sing-a-long feature” refers to “a type of musical device.”
Brief at 3. We will review the evidence of record
(emphasis added) to determine what is the genus of the
goods and whether the relevant public would understand the
term “Sing-A-Long” to refer to the genus of the goods.
We begin by looking at applicant’s specimen. The
specimen contains the following statements: “SING-A-LONG &
RECORD WITH TWO DETACHABLE MICROPHONES” and “Sing-A-Long &
record.” The specimens indicate that the karaoke player
“includes 4 Cassette tapes – 48 songs!” and “Lyric sheets
included.” In another place, the specimen also contains
the notation “sing-a-long® karaoke” (stylized) and
applicant has explained that the use of the registration
symbol was inadvertent. Response dated November 5, 2003 at
2. We note that even the use of the letters "TM" would not
by itself convert a term that does not function as a
trademark into one that does. In re A La Veille Russie
Inc., 60 USPQ2d 1895, 1901 (TTAB 2001); In re Caserta, 46
USPQ2d 1088, 1090 (TTAB 1998).
The examining attorney also submitted the following
evidence from the Internet.
Ser. No. 76518416
4
The “Singing Machine” webpage describes itself as “The
Leader in Home Karaoke.” Among the products listed on the
page are the following:
Care Bears Sing-Along Player/Recorder – Sharing is
caring and with your own personal Care Bears sing-
along cassette player/recorder you and your friends
can cherish the memories. Record your performance in
your sing-along recorder and playback your songs for
hours of fun. Includes sing-along microphone and 48
songs with lyric sheets…

Dual Cassette Sing-Along Player/Recorder – Singing
Machine’s dual cassette sing-along player/recorder is
what the kids are looking for to be the next shining
star.

Sing-Along Cassette Player/Recorder – Sing-along to
your favorite songs with Singing Machine’s cassette
player with record functions. Includes sing-along
microphone and 48 songs with lyric sheets.

Nickelodeon Sing-Along Cassette Player – Join Dora,
Little Bill and Blue with Singing Machine’s sing-along
cassette player with record functions.

Cassette Sing-Along Player/Recorder – Cassette Sing-
Along Player/Recorder w/ AM/FM Radio.

The website www.bizrate.com contains a category “Sing
Along Karaoke Equipment” listed under “Musical Instruments
>Karaoke Equipment >Sing Along.” Examples under this
listing include:
MTV Karaoke Nick Jr. Sing-Along Karaoke

MTV Karaoke Nickelodeon Sing-Along Karaoke

Ace Karaoke – Magic Singalong Song Chip – Children
Songs

Ace Karaoke – Magic Singalong Microphone I
Ser. No. 76518416
5
The Palos Sports webpage shows a product identified as
a “VHS – Video Karaoke Party Machine with Sing Along
Microphone now with a compact CD Player. Sing along with
recorded music and tape your performance… Includes
prerecorded VHS-video karaoke sing-a-long tape and VCR
connecting cord.”
The examining attorney also submitted excerpts from
the NEXIS database that show other uses of the term “sing-
a-long.”
Aaron’s Own to Rent, like many of the major chains,
rents VCRs, camcorders, microwaves, air conditioners,
sofas, cocktail tables and office furniture. It also
rent[s] stoves, refrigerators, vacuums, Nintendo
games, radar detectors and sing-a-long Karaoke
machines.
Houston Chronicle, February 7, 1992.

The toddler: That Fisher-Price singalong recorder is
great.
Daily Town Talk (Alexandria, LA), November 30, 2001.

Craven was in and out of Kay Bee by 5:05 a.m., with …
a singalong cassette recorder in hand.
News & Record (Greensboro, NC), November 24, 2001.

Somehow, even those who cannot carry a tune cannot
resist the scrolling words and microphone of the sing-
a-long device. There are karaoke parlors throughout
Orange County…
Orange County Register, May 2, 2000.

The evidence above convinces us that karaoke players
are also known as “sing-a-long” karaoke or cassette
players. “Sing-A-Long” karaoke players include tapes or
CDs of music for participants to use to sing along with the
Ser. No. 76518416
6
song. We add that “Karaoke” is defined as a Japanese word
meaning “a device that plays instrumental accompaniments
for a selection of songs to which the user sings along and
that records the user’s singing with the music.” Merriam-
Webster’s Collegiate Dictionary (11th ed. 2003).1
Therefore, applicant’s term emphasizes to purchasers not
familiar with the Japanese word that “Karaoke” is a sing-a-
long device. “Sing-a-long” is an alternative English
generic term that makes clear what a “karaoke” player is.
Next, we look at whether the term is understood by the
relevant public to refer to the product included in the
genus of the goods. Ginn, 228 USPQ at 530. “Evidence of
the public's understanding of the term may be obtained from
any competent source, such as purchaser testimony, consumer
surveys, listings in dictionaries, trade journals,
newspapers, and other publications.” In re Merrill Lynch,
Fenner and Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143
(Fed. Cir. 1987). “The critical issue in genericness cases
is whether members of the relevant public primarily use or
understand the term sought to be protected to refer to the
genus of goods or services in question.” Ginn, 228 USPQ at

1 We take judicial notice of this definition. University of
Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594,
596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983).
Ser. No. 76518416
7
530. In this case, we have evidence that distributors and
purchasers would understand the term as referring to a
genus of karaoke players. Shoppers at bizrate.com are
directed to: “Karaoke Equipment >Sing Along.” At the
Singing Machine website, purchasers of karaoke-type
products would encounter numerous “sing-along” products
including a “Care Bears Sing-Along Player/Recorder.” This
sing-along recorder clearly uses the term generically as it
goes on to refer to “your own personal Care Bears sing-
along cassette player/recorder,” to record “your
performance in your sing-along recorder.” It includes a
“sing-along microphone.”
Articles in newspapers indicate that Aaron’s Rent to
Own rents “sing-a-long Karaoke machines” and that Fischer
Price has a “great sing-along recorder.” We also add that
applicant’s own specimens use the term in the same manner:
“Sing-A-Long & Record with two Detachable Microphones.”
Applicant’s goods seem similar to the Singing Machines’
“Dual Cassette Sing-Along Player/Recorder,” which is
described as: “This recording studio includes two
microphone inputs for duets.” The evidence set out above
clearly supports the conclusion that purchasers would
understand the term “Sing-A-Long” to primarily refer to the
genus of the goods.
Ser. No. 76518416
8
In response to the examining attorney’s evidence and
arguments that its mark is generic, applicant maintains
(Brief at 1-2) that:
The trademark attorney argues that the term “sing-a-
long” is a well-known term used to describe karaoke
products and services and, as proof that it is well
known, attaches web excerpts, not of the term in issue
but of sing-along, which it passes off as a “spelling
variation.”

It is therefore inarguable on the record that what
applicant seeks to register is a “spelling variation”
of a non-registrable generic term, but in the
conversion from generic to a “spelling variation”
thereof, there is thus the modicum of differences
necessary to qualify as a source identifier
registrable on the Supplemental Register.

In its Reply Brief (p. 1) (emphasis omitted) clarifies
this argument as follows:
The Examining Attorney has made of record use of SING-
ALONG (seven times at page 4, paragraphs 3, 4 and 5);
use of SING-A-LONG (one at page 5, last paragraph);
SINGALONG (once at page 6, middle paragraph); and
SINGALONG (once at page 7, top paragraph).

Thus, the single use of SING-A-LONG is outnumbered 7
to 1 by SING-ALONG and 2 to 1 by SINGALONG.

In response to applicant’s arguments, we note, as set
out above, that applicant admits that the underlying term
“sing-along” is “a non-registrable generic term” and that
applicant is seeking to register a “spelling variation” of
that term. However, even misspellings of generic terms
have been held to be generic. See Nupla Corp. v. IXL
Manufacturing Co., 114 F.3d 191, 42 USPQ2d 1711, 1716 (Fed.
Ser. No. 76518416
9
Cir. 1997) (“Based on overwhelming documentary evidence of
record showing widespread and long-time prior use of the
CUSHION-GRIP mark in the hand tool industry, we agree with
the district court's conclusion that there is no genuine
issue of material fact that Nupla's mark [CUSH-N-GRIP],
which is merely a misspelling of CUSHION-GRIP, is also
generic as a matter of law, and the registrations are
therefore invalid”); In re Yardney Electric Corp., 145 USPQ
404, 405 (TTAB 1965) (“‘NICEL’ is merely a misspelling and
phonetic equivalent of ‘nickel’ and means the same thing.
As such the subject matter identifies applicant's product
as to kind and not source. It is therefore not registrable
within the purview of the statute”) (citation omitted).
Second, the evidence demonstrates that there are
several accepted alternative spellings such as “sing along”
and even “singalong,” and applicant’s spelling “sing-a-
long” is equally generic. Applicant’s spelling is no
different than using the alternative spellings “judgment”
or “judgement.”
Third, the evidence shows that the exact term “sing-a-
long” is used in the evidence. See Houston Chronicle,
February 7, 1992 (“sing-a-long Karaoke machines”); and
Orange County Register, May 2, 2000 (“the sing-a-long
device”). Indeed, the spelling variations are found in the
Ser. No. 76518416
10
same advertisements. See Palos Sports webpage, “VHS-Video
Karaoke Party Machine with Sing Along Microphone” and “VHS-
video karaoke sing-a-long tape.”
Therefore, applicant’s chosen spelling is just as
generic as the other spellings.
The record clearly shows that the English term “sing-
a-long” is used in association with the Japanese term
“karaoke” to inform purchasers what karaoke means in
English and that karaoke players are “sing-a-long” devices.
Furthermore, the evidence shows that purchasers or users of
karaoke players would recognize that the term refers to the
genus of the goods. Therefore, applicant’s mark SING-A-
LONG for karaoke players is generic.
Decision: The refusal to register is affirmed.