IP Law Daily, TRADEMARK—TTAB: Song title failed to serve as a source indicator, (Jul 15, 2022)
Law Firms Mentioned:Sheppard, Mullin, Richter & Hampton LLP
Organizations Mentioned:Di-Namic Records
By Kevin M. Finson, J.D.
The proposed mark THIS IS FOR MY GIRLS was not registerable because the specimens provided used it as the name of a particular song, not as an indicator of the source of the specified services.
An application seeking service mark registration of a song title was properly denied by the trademark examining attorney, the Trademark Trial and Appeal Board has held. Consumers would not see the uses of the mark, THIS IS FOR MY GIRLS, displayed in the applicant’s specimens of use as indicating the source of any services (In re Di-Namic Records, July 13, 2022).
Di-Namic Records (Di-Namic) sought registration on the Principal Register of the standard character mark THIS IS FOR MY GIRLS for “entertainment information; musical composition for others; production of musical sound recordings,” in International Class 41. The Examining Attorney refused registration under Sections 1 and 45 of theTtrademark Act on the ground that the specimens of record did not show an association between the mark and the specified services and therefore did not show the mark as used in commerce. Di-Namic appealed.
Specimens of use. Di-Namic submitted five specimens with its application. The first three consisted of webpages from iTunes, YouTube, and Soundcloud on which the phrase THIS IS FOR MY GIRLS appeared as the name of a musical track that could be played or purchased on that page, and that also included information on the composer and singers who performed the song. The fourth was an article explaining that Michelle Obama had recruited renowned women to record the song THIS IS FOR MY GIRLS to support the LET GIRLS LEARN INITIATIVE. The final specimen was the sheet music for the song. Di-Namic also submitted synchronization license agreements which identified the song THIS IS FOR MY GIRLS as the musical composition which was the subject of the licenses.
The Board held that nothing in any of these specimens would possibly suggest to a consumer a THIS IS FOR MY GIRLS brand of services. Every single use was as the name of an already-existing musical composition. There was simply no nexus between the mark and the specified services.
The Board affirmed the refusal to register.
The Case is Serial No. 87399929.
Attorneys: Benji Paradewelai for the USPTO. Jill M. Pietrini (Sheppard, Mullin, Richter & Hampton LLP) for Di-Namic Records.
Companies: Di-Namic Records
Cases: Trademark USPTO