IP Law Daily, TRADEMARK—TTAB: ‘BOYS WORLD’ musical group functions as a trademark, (Jun 16, 2023)

By Brian Craig, J.D.

The musical group showed widespread recognition with a large social media following.

Concluding that the musical group BOYS WORLD has gained widespread recognition, the Trademark Trial and Appeal Board has reversed a refusal to register the mark and found that the BOYS WORLD mark functions as a trademark. In reversing the examining attorney’s refusal to register the mark, the Board concluded that the musical girl group Boys World is consistently identified by streaming services and social, print and web media as the source of BOYS WORLD audio recordings featuring music. This musical group submitted evidence showing widespread recognition with the number subscribers and views on YouTube, followers on social media, and articles appearing in the media. The Board’s May 1 opinion was redesignated as precedential on June 14, 2023 (ZeroSix, LLC v. USPTO, May 1, 2023, Adlin, M.).

ZeroSix, LLC applied to register the name of the musical group BOYS WORLD, in standard characters, for audio recordings featuring music. “Boys World” is the name of a musical “girl group” that is sometimes referred to as “the Gen Z Spice Girls.” The examining attorney denied the application finding that the proposed mark fails to function as a mark. The examining attorney concluded the name of a performing group and would not necessarily be seen as a source identifier. After the denial of reconsideration, the applicant appeal to the Board.

Failure to function. The Board analyzed whether the BOYS WORLD mark fails to function as a mark. The Board recognized that while a performing artist’s name may identify and distinguish the artist’s records, that does not mean that the artist’s name necessarily serves as a trademark for the artist’s records. An artist’s name may simply identify the source of the performance contained on the record, which is not enough to establish that the artist’s name functions as a mark for the recording. In order to function as a mark for recordings, a performing artist’s name must be used for a series of recordings. There must be evidence that the name functions as a mark. Evidence may include promotion and recognition of the author’s name so that prospective readers, when they see the name, they know what they are getting.

Widespread recognition. In this case, the Board found the applicant showed widespread recognition of the musical group. The musical group’s YouTube page has 154,000 subscribers and one official music video has been viewed 2.1 million times on YouTube. One song surpassed 6 million streams on Spotify. The BOYS WORLD TikTok page has 2 million followers and 64.5 million “likes.” The group has 190,000 followers on Instagram and 31,200 followers on Twitter, which numbers show widespread recognition of the group. A number of articles describe the group, as well as the group’s members, origin story, music and philosophy. Articles appeared in the well-known publications Billboard and People. These articles, in well-known publications reveal widespread recognition of BOYS WORLD and the applicant’s identified goods that bear the BOYS WORLD mark. Because consumers know what they are getting” when they purchase BOYS WORLD audio recordings featuring music, BOYS WORLD functions as a mark. Therefore, the Board reversed the decision of the examining attorney.

The Case is Serial No. 88981832.

Attorneys: Ellie Schwimmer (Live Nation Worldwide, Inc.) for ZeroSix, LLC. Charles H. Hiser IV for the USPTO.

Companies: ZeroSix, LLC

Cases: Trademark USPTO