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.
Sport Dimension, Inc. v. Coleman Co. CAFC April. 19, 2016.
Coleman Company, Inc. (“Coleman”) appealed from a stipulated judgment of non-infringement entered by the US District Court (Central District California). Coleman challenged the district court’s claim construction on which the stipulated judgment was based and its exclusion of Coleman’s expert.
Coleman, an outdoor sporting equipment company sells an array of products, including personal flotation devices. Coleman owns United States Design Patent No. D623, 714 (“D’714 patent”) claiming “the ornamental design for a personal flotation device,” The D’714 patent generally discloses a personal flotation device with two arm bands connected to a torso piece. The torso piece is flat on its back and tapers toward a connecting strap on its sides.
Sport Dimension, Inc. (“Sport”) is a sports equipment and apparel company that sells water-sports -related equipment, including its Body Glove ® line of personal flotation devices. Sport’s Body Glove ® Model 325 is the accused device. Coleman’s design, have two armbands connected to a torso piece; while the torso section in the Body Glove® device extends upwards to form a vest that goes over a person’s shoulders.
Sport filed a declaratory judgment action in the district court requesting judgment that it did not infringe the D’714 patent and that the patent is invalid.
THE CAFC ADDRESSES THE EXCLUSION (BY THE DISTRICT COURT) OF COLEMAN’S EXPERT
The District Court excluded the testimony of Coleman’s expert, Peter Bressler (“Bressler”). Sport argued that Bressler was not qualified to testify on the functionality of the D’714 patent’s design, and the District Court agree. The District Court explained that while Bressler “appears to possess substantial experience in the field of industrial design,” Coleman “does not dispute—and Bressler’s deposition testimony makes it quite clear—that Bressler has no substantive experience in the narrower field of personal flotation device design.” Based on the court’s view that Bressler’s experience is insufficient to opine on the contested issues as an expert, therefore the district court excluded his testimony.
The district court found that the armbands, the armband attachments, the shape of the armbands, the tapering of the armbands, and the tapering of the side torso were all elements that serve a functional rather than ornamental purpose in the D’714 patent.” The CAFC agreed that “certain elements of Coleman’s design serve a useful purpose”, but rejected the district court’s ultimate claim construction. The CAFC found that the district court’s elimination of the armbands and side torso tapering from the claim entirely, resulted in the CAFC’s determination that its [district court’s] “construction runs contrary to our law”. The CAFC elaborated on this position when it stated: (1) “The district court’s construction in this case conflicts with that principle of design patent claim construction because it eliminates whole aspects of the claimed design”; (2) “the district court’s construction of the Design Patents to have no scope whatsoever fails to account for the particular ornamentation of the claimed design and departs from our established legal framework for interpreting design patent claims”; and, (3) “design patents protect the overall ornamentation of a design, not an aggregation of separable elements”.
The CAFC’s decision: For the reasons stated above, we reject the court’s claim construction, vacate its judgment of noninfringement, affirm its exclusion of Coleman’s expert, and remand for proceedings consistent with this opinion.