WIXT TV, Inc.

Trademark Trial and Appeal Board

May 22, 2001

No. 75370316re (T.T.A.B. May. 22, 2001)

04/03/01 Paper No. 17
UNITED
Tr
Martin G. Linihan o
for WIXT TV, Inc.
Amos T. Matthews, T
(David Shallant, Ma
Before Bucher, Holt
Judges.
Opinion by Bucher,
This is an app
CHANNEL 9 on the Su
services,” in Inter
originally sought r
receiving the initi
15 USC §1052(e)(1),
registration on the
Examining Attorney
the asserted mark i
television programTHIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
DEB
STATES PATENT AND TRADEMARK OFFICE
________
ademark Trial and Appeal Board
________
In re WIXT TV, Inc.
________
Serial No. 75/370,316
_______
f Hodgson Russ Andrews Woods & Goodyear, LLP
rademark Examining Attorney, Law Office 108
naging Attorney).
_______
zman and Rogers, Administrative Trademark
Administrative Trademark Judge:
eal from the final refusal to register NEWS
pplemental Register for “television program
national Class 41.1 While applicant
egistration on the Principal Register, after
al refusal under Section 2(e)(1) of the Act,
applicant amended this application to seek
Supplemental Register. The Trademark
then refused registration on the ground that
s generic as applied to applicant’s
services and therefore it is incapable of
Serial No. 75/370,316
2
identifying these services and distinguishing them from similar
services of others.
In order to meet his burden of demonstrating genericness,
the Trademark Examining Attorney has submitted for the record
dictionary entries for the words “news”2 and “channel.”3 He did
a search on the LEXIS/NEXIS® database that resulted in almost
thirty thousand “hits” for the search term “news channel” (or
the plural form, “news channels”). He submitted for the record
the first two dozen excerpts containing this terminology. The
following are examples of the context of such usages from this
and subsequent searches of the NEXIS® database:
… include all Tier I programs plus Dow Jones,
Newscable, foreign broadcast signals and a
satellite news channel. “Everything You Wanted
to Know about Cable TV,” The Washington Post,
October 6, 1982, Virginia Weekly, p. 10.
… beyond it is Six News Now, its 24-hour-a-day
news channel. “Reader Friendly,” American
Journalism Review, August 2000, p. 22.
… celebrate the six-month anniversary of CNN
Turk, its first free 24-hour news channel outside
the United States. “CNN meets the Turkish High
1 Application Serial No. 75/370,316 filed on October 8, 1997. The
application is based on asserted dates of first use and first use in
commerce on August 15, 1996.
2 News: 1.a. Information about recent events or happenings,
especially as reported by newspapers, periodicals, radio or
television. b. A presentation of such information, as in a newspaper
or on a newscast. The American Heritage Dictionary of the English
Language, Third Edition, electronic version © 1992.
3 Channel: 8. Electronics. A specified frequency band for the
transmission and reception of electromagnetic signals, as for
television signals. The American Heritage Dictionary of the English
Language, Third Edition, electronic version © 1992.
Serial No. 75/370,316
3
Council,” American Journalism Review, August
2000, p. 26.
The advent of cable and the Internet has begotten
a plethora of 24-hour news channels and media Web
sites, knocking the networks off the top of
viewers’ and advertisers’ lists. “Plugged In,”
The Boston Herald, July 23, 2000, p. 4.
… Animal Planet, Court TV, the Golf Channel,
Classic Sports Network, CSPAN 2, HBO, Galavision,
Fox News Channel and WWTO Channel 35. These and
eight other channels currently listed in TVWeek
will be added to the daily television page … “TV
Listings Change,” Chicago Tribune, March 17,
1999, p. 3.
Cable news channel CNBC gave viewers running
updates on the Dow’s progress toward the magic
mark. “Dow close, but no 10,000,” USA Today,
March 16, 1999, p. 13.
The agencies’ presentations were open to the
public. Among the audience of 80-100 were the
local TV news channels and onlookers from non-
contesting agencies. “Vegas Review has
Inimitable Style,” Adweek, March 15, 1999.
Furthermore, the Trademark Examining Attorney has placed a
number of NEXIS® articles into the record showing “News Channel
9” used with reference to WFTV in Orlando, FL, to WTVC in
Chattanooga, TN, to Bay News Channel 9 in Florida’s Tampa Bay
area, to TCI cable channel 9 in Baton Rouge, LA, and to Newnan
Utilities Cable TV channel 9 in Newnan, GA.
In spite of this evidence, applicant argues throughout the
prosecution of this application that the Trademark Examining
Attorney has failed to meet his burden of showing that NEWS
CHANNEL 9 is incapable of functioning as a source indicator.
Serial No. 75/370,316
4
When the refusal was made final, applicant filed this
appeal. Applicant and the Trademark Examining Attorney have
submitted main briefs. Applicant did not request an oral
hearing. We affirm the refusal to register.
As our principal reviewing court has stated:
…[d]etermining whether a mark is generic …
involves a two-step inquiry: First, what is the
genus of goods or services at issue? Second, is
the term sought to be registered … understood by
the relevant public primarily to refer to that
genus of goods or services?
H. Marvin Ginn Corporation v. International Association of Fire
Chiefs, Inc., 782 F.2d 987, 990, 228 USPQ 528, 530 (Fed. Cir.
1986).
The test has two elements. The first is to identify the
genus or class of services at issue. The second element is to
determine if the relevant purchasing public understands the
designation sought to be registered primarily to refer to that
genus or class of services. In the Marvin Ginn case, the term
FIRE CHIEF was held not to be generic for a magazine directed to
the field of firefighting, because there was no evidence that
the relevant purchasing public refers to a class of fire
fighting publications as FIRE CHIEF, and also because the term
sought to be registered was neither the name of the firefighting
industry nor about the firefighting industry.
Serial No. 75/370,316
5
All of the uses drawn from the NEXIS® database denote a
particular type of television program content focusing on
“recent events or happenings.”4 Given how often the terminology
“news channel” appears in print, it is readily understood to
refer to television news presentations found at a specified
frequency or location on the television dial. While many of
these uses suggest a television channel devoted exclusively to
news 24-hours a day,5 others refer to the news department of
local television stations or even to prominent news segments
within a broader format of such stations. Judging from the
specimens of record, ads from the Syracuse Herald American
touting applicant’s local newscasts, it is this latter usage
that fits applicant’s services:
Given that the entire mark herein is NEWS CHANNEL 9, the
Trademark Examining Attorney has placed a number of LEXIS-NEXIS®
articles into the record showing the use of “News Channel”
followed by the numeral, “9.” Hence, the articles show multiple
4 See definition of “News,” footnote 2, supra.
5 Cf. In re Conus Communications Co., 23 USPQ2d 1717 (TTAB 1992)
[ALL NEWS CHANNEL found to be generic for television broadcasting and
production services].
Serial No. 75/370,316
6
uses of the entire alleged mark herein, “News Channel 9,” used
with reference to television stations in Orlando and Tampa Bay
(FL), Chattanooga (TN), Baton Rouge (LA) and Newnan (GA).
Similar to applicant’s usage, these appear to be references to
prominent news segments within a broader format of these
television stations. In this way, the record supports a finding
that television viewers know quite well – that each local cable
system, metropolitan area or other distinct geographical region
has its own “Channel 9,” and that these channels frequently, and
sometimes exclusively, feature news programs.
Accordingly, we find that under the first part of the
Marvin Ginn test, the genus of services at issue here is
television news programs accessible via channel 9 on one’s local
television dial.
In order to answer the second question of the Marvin Ginn
test, the Trademark Examining Attorney has supplied us with
dictionary definitions and a variety of uses from the NEXIS®
database. Then in response to the inquiry of the Trademark
Examining Attorney, applicant confirmed that “the numeral 9
identifies the number of the television channel on which
applicant broadcasts.” (applicant’s response of December 28,
1998). Applying the second prong of the Marvin Ginn test, we
find that “News Channel 9” is understood to refer to the genus
of services at issue, namely, a newscast found at a specified
Serial No. 75/370,316
7
television frequency. Hence, NEWS CHANNEL 9 is deemed to be
generic for applicant’s services.
On the basis of the present record, it would appear
difficult if not impossible for another television station in
another part of the country to convey to the public that its
services share these service attributes without using the words
“News Channel 9.” Hence, applicant cannot deprive other
television stations around the country of the right to call this
service by its name. See Abercrombie & Fitch Co. v. Hunting
World, Inc., 537 F.2d 4, 9, 189 USPQ 759, 764 (2nd Cir. 1976).
As Professor McCarthy stresses, in citing to Judge Learned
Hand’s decision holding the term ASPIRIN to be generic, the
question should be “what does the relevant public think the term
connotes?” 2 J. McCarthy, McCarthy on Trademarks and Unfair
Competition, Section 12:4 at page 12-9 (4th ed. 1998). The
record shows that as members of the public travel from one part
of the country to another, they would view any promotion of NEWS
CHANNEL 9 as indicating only the opportunity to obtain
television news programs on channel 9, whether it be through a
local television cable system or from a local VHF broadcast
station.
In arguing for a reversal of the position taken by the
Trademark Examining Attorney, applicant points out that the
Office has within the past several years registered NEWSCHANNEL
Serial No. 75/370,316
8
106 and NEWSCHANNEL 127 on the Supplemental Register.
Accordingly, applicant argues that the United States Patent &
Trademark Office should treat this mark in the same manner as
these two marks for which it issued federal trademark
registrations for similar services.
While uniform treatment under the Trademark Act is
desirable, our task on this appeal is to determine whether
applicant’s mark is registrable based upon the factual record
before us. The records developed in the applications which
resulted in registrations of NEWSCHANNEL 10 and NEWSCHANNEL 12
on the Supplemental Register are not before us. See In re
Pennzoil Products Co., 20 USPQ2d 1753, 1758 (TTAB 1991). In any
event, each case that comes before this Board must be resolved
on its own merits. See In re Citibank, N.A., 225 USPQ 612, 616
(TTAB 1985); In re Half Price Books, Records, Magazines, Inc.,
225 USPQ 219, 221 (TTAB 1984); and In re Hunter Publishing Co.,
204 USPQ 957, 961 (TTAB 1979).
In conclusion, we find that NEWS CHANNEL 9 is incapable of
serving as a source indicator for applicant’s television program
services.
Decision: The refusal to register is affirmed.
6 Reg. No. 2,236,239, issued on the Supplemental Register on March
30, 1999, for “television broadcast services.”
7 Reg. No. 2,305,000, issued on the Supplemental Register on August
30, 1999, for “television broadcasting services,” with a disclaimer of
the term “NEWSCHANNEL.”