International report - TTAB decision highlights value of well-conducted consumer surveys 08 Feb 12
Andrews Kurth Kenyon LLP - USA
In In re Country Music Association (Serial Nos 78906900 and 78901341, 25th October 2011), the Trademark Trial and Appeal Board (TTAB), in a precedential opinion, has considered whether the phrase "Country Music Association" could be registered as a trademark for “association services” relating to country music or whether such use was generic. In finding that the mark was not generic, the TTAB highlighted the importance of survey evidence, in particular in understanding how an applied-for designation is understood by the relevant purchasing public.
The Country Music Association (CMA) was formed in 1958 with 233 members. Since then, it has grown to more than 5,500 music industry professionals and companies from 38 countries around the world. It has presented the CMA awards since 1969 and sponsored the Country Music Festival since 1972.
In 2006 the CMA filed two trademark applications, the first consisting of the phrase "Country Music Association" as part of a design (Application Serial No 78/901,34, filed 6th June 2006) and the second consisting of the phrase in standard characters (Application Serial No 78/906,900, filed 13th June 2006). Both applications were filed under Section 1(a) of the Trademark Act, alleging a first use in commerce in 1958 for the word mark and in 1963 for the design mark. The examining attorney rejected both applications, refusing the word mark as generic under Section 2(e)(1) of the act and refusing the design mark for failure to disclaim the word mark incorporated therein. The instant appeal followed.
The TTAB analysed the CMA’s claims under a test laid down by the Federal Circuit for determining whether a mark is generic. This test involves a two-step inquiry:
- Determining the genus of goods or services at issue.
- Determining whether the relevant purchasing public understands that phrase to represent a brand name or a genus (In re Am Fertility Soc (188 F3d 1341 (Fed Cir 1999))).
The bulk of the test was dealt with quickly. The TTAB determined the genus of goods or services to be defined by the CMA’s own recitation of services - specifically, “association services, namely, promoting country music, and promoting the interests of country music entertainers and the country music recording industry”. The relevant purchasing public was similarly defined to be “people that listen to and/or are in some way involved with country music”. The TTAB devoted the large remainder of its analysis to the question of how that purchasing public viewed the mark.
In regard to the second stage of the analysis, the TTAB found the examiner’s evidence to be unpersuasive. While the examiner was able to produce records of at least 28 organisations employing the mark, including the Lesbian and Gay Country Music Association and the Christian Country Music Association, the TTAB noted that in nearly all cases, the mark was used in capitalised form, possibly indicative of its use as a brand or trade name, and the applicant had submitted evidence that organisations using the mark, aside from the CMA, tended to be too obscure to be widely known to the relevant public.
By contrast, the CMA produced strong evidence that the mark was viewed by the public as a brand. This evidence partially consisted of expert testimony, which the TTAB regarded as having mixed probative value. It looked favourably on an expert report disclosing that 99% of the uses of the mark in a LexisNexis search appeared in initial capital format, indicating its use as a brand. It was dismissive, however, of a companion report that dissected the dictionary definitions of the constituent terms to find that the mark functioned primarily as a brand.
The TTAB appeared to give the greatest weight to additional survey evidence submitted by the CMA. This evidence consisted of a "Teflon" type consumer survey, first described in EI du Pont de Nemours and Co v Yoshida International Inc (393 F Supp 502 (EDNY 1975)). The Teflon survey asked consumers to categorise phrases such as "American Airlines", "Alumni Association" or "Country Music Association" as either brand names or common names. The results indicated that consumers were highly capable of distinguishing between brands and common names, and that 85% regarded "Country Music Association" to be a brand.
Based on the entirety of the record, and the survey results in particular, the TTAB held that there was substantial doubt that the mark was generic and such doubt had to be resolved in favour of the applicant.
The TTAB resolved two additional matters before concluding. First, it held that the term "association", by itself, was generic and required that it be disclaimed in both applications, consistent with the majority of registrations for association services. Second, it concluded that the CMA had submitted sufficient evidence of acquired distinctiveness to register the mark, based on the CMA’s extensive advertising and by way of the same survey evidence used to show the mark was not generic.
Overall, this case stands for the proposition that the best evidence of how a relevant purchasing public perceives a mark is usually a poll or survey of that relevant purchasing public. While other evidence, such as third-party usage from internet or LexisNexis searches may yield some probative value, it will often pale in comparison to the value of a well-conducted consumer survey.
This article first appeared in World Trademark Review Daily, published by The IP Media Group (www.worldtrademarkreview.com).
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