“SERIAL” AN EXTREMELY POPULAR PODCAST CANNOT PROTECT ITS NAME

In March 2016 the Patent and Trademark Office (PTO) refused registration of the mark SERIAL, finding that the mark was both “generic” and too “descriptive” to be registered.

Serial is a Peabody award-winning podcast (“the podcast”) narrated by journalist Sarah Koening that is the brainchild of the creators of the public radio program called “This American Life”. The podcast is a story, told over multiple episodes, describing the 1999 murder of Hae Min Lee and the resulting conviction of her former boyfriend, Adnan Masud Syed. Serial’s second season concluded in early April 2016. Bowe Bergdahl, the soldier currently accused of desertion was the focus of Season 2. According to Serial’s website Serial “tells one story…over the course of a season” and brings a new chapter each week.

Serial’s producers filed a total of five applications. One was on the standard character mark “SERIAL.” Two were on a stylized “S” – one black-and-white and one in color. Additionally, there were two that spelled Serial in a slightly stylized form (one black-and-white and one in color). Other than the “S” marks, all of the marks were rejected by the United States Patent and Trademark Office (USPTO).

Season 1 (launched in October 2014) has experienced over 100 million downloads in the US. Many in the media have called Serial a resounding phenomenon and credited Serial with fueling the 2014 podcast renaissance. Notwithstanding its success, registration was refused under Trademark Act Section 2(e)(1) because the applied-for mark is merely descriptive of applicant’s services and, also under, Section 2(e)(1) for Generic Refusal.

Additionally, the PTO observed that the applicant’s claim of acquired distinctiveness under Section 2(f) was insufficient to overcome the refusal because no amount of purported proof that a generic term has acquired secondary meaning can transform that term into a registrable trademark or service mark.

The PTO decision also addressed an alternative outcome, specifically stating “in the alternative, if the applied-for mark is ultimately determined not to be generic by an appellate tribunal, then the refusal of registration based on the applied-for mark being merely descriptive of applicant’s services is maintained and continued”.

Not leaving any stone unturned, the PTO decision stated “If the applied-for mark is ultimately determined to be merely descriptive and not generic, the Section 2(f) evidence is insufficient to show acquired distinctiveness because of the highly descriptive nature of the mark in association with the applied-for services.
Serial is reported to be planning to appeal this decision.

This case highlights a problem experienced by content creators when trying to choose their brand identification; which is that brand names must be both creative and distinctive.