Since I’m an equal opportunity kind of guy, I’ve decided to write a little something about Twitter this week after devoting last week’s blog entry to Facebook (which, by the way, got a couple of “likes” after I posted it on my wall).  Perhaps some of you Twitter addicts out there will similarly show me some love by tweeting a link to my blog post to all of your followers.  And, if you want to show me BIG love (and why wouldn’t you?), start following me on Twitter to get all the latest and greatest trademark news.  I promise I won’t tweet about what I had for dinner or how many bananas I bought at the grocery store.

Anyway, unless you have been living on another planet since August 2006 (or maybe logged onto Facebook all day), all of you know that Twitter is a social networking and microblogging service that enables its 100 million registered users to post brief messages up to 140 characters that are displayed on their profile pages.  These messages are called “tweets” and, according to Wikipedia, there are an incredible 65 million tweets posted each day (the vast majority of which are about as intellectually stimulating as watching paint dry).  As you might expect, Twitter is the owner of a federal registration issued in 2009 for TWITTER (Reg. No. 3619911), which is registered for what amounts to social networking and telecommunications services that allow individuals to send and receive messages.  In addition, Twitter recently became the owner by assignment of a registration for COTWEET (Reg. No. 3780175), which is basically a software platform that help businesses market themselves using the Twitter service.  Also, Twitter has pending applications for TWEET (Serial No. 77715815) and RETWEET (Serial No. 77804841), both of which seek registration for services identical to those identified in its registration for TWITTER.

In early 2009, a Kansas company by the name of Teeshirtmania.biz, LLC filed three separate trademark applications seeking registration for TWITTER (Serial No. 77711787), TWEETME (Serial No. 77742436), and TWEET.ME (Serial No. 77742449).  These applications were filed on an intent-to-use basis and are for a variety of different products, including clothing, bumper stickers, pens, greeting cards, stationery, and other types of novelty items.  The Trademark Examining Attorney allowed all three applications to be published for opposition (although she did initially refuse registration of TWITTER on the basis that it was likely to cause confusion with Twitter’s prior registration for TWITTER and that it falsely suggested a connection with Twitter).  To the surprise of absolutely nobody, Twitter filed extensions of time to oppose the three applications while it further investigated its potential claims against Teeshirtmania.

Well, on August 25, Twitter took the plunge and filed notices of opposition against each of Teeshirtmania’s applications (Opposition Nos. 91196233, 91196240, and 91196275).  The oppositions against TWEETME and TWEET.ME are based on Twitter’s prior rights in its COTWEET and TWEET marks and allege a likelihood of confusion and dilution of its famous marks.  The opposition against Teeshirtmania’s TWITTER application is obviously based on Twitter’s prior rights in the TWITTER mark and similarly alleges likelihood of confusion and dilution, but also throws in for good measure a claim for false suggestion of a connection.  Teeshirtmania now has until the beginning of October to respond to the oppositions.  If Teeshirtmania chooses not to defend the oppositions, a default judgment will be entered against it and its applications will go abandoned.

Although not quite to the extent of Facebook, Twitter has been aggressive in going after those it believes are attempting to trade off of the notoriety and fame of its valuable trademarks.  Twitter has recently filed an opposition against an application for LUVTWEET, and is currently considering or has considered pursuing oppositions against:

DIPURTWEET (Serial No. 77935249)

TRAVEL TWEETS 100 (Serial No. 76700251)

TWEETSTAKES (Serial No. 77738012)

TWITTER (Serial No. 77755843)

TWEETWORLD (Serial No. 77704250)

TWITANIC (Serial No. 77735852)

TWITATAP (Serial No. 77719784)

So, I think the bottom line is that if you’re thinking about adopting a mark that resembles TWEET or TWITTER, you better prepare for a possible challenge by Twitter.  But, honestly, now that you’re informed and know that such a challenge is more likely than not, you might want to consider coming up with some other trademark that won’t require taking out a second mortgage to register.

This week’s blog entry comes courtesy of everyone’s favorite place to post the most mundane and trivial tidbits of their existence for the “enjoyment” of their 750 closest “friends.”  A few days ago, four separate people emailed me this article about Facebook suing a company by the name of Teachbook.com, LLC.  Apparently, Teachbook.com has recently commenced use of the mark TEACHBOOK in connection with what is basically a social networking site and online community for teachers.  Facebook alleges that Teachbook.com’s use of TEACHBOOK is likely to cause confusion with Facebook’s registered FACEBOOK mark and/or will dilute the distinctive quality of its famous FACEBOOK mark.  In addition, Facebook is opposing Teachbook.com’s trademark application for TEACHBOOK, but the opposition has currently been suspended pending the disposition of the civil case.

After reading this article, I decided to see how many other oppositions Facebook has filed over the past couple of years against trademark applications owned by third parties.  The answer?  Since January 2009, Facebook has instituted 17 oppositions (about one opposition every 4.5 weeks) to challenge a variety of marks, including:

VISIONBOOK1 (Serial No. 77755527)

FAMEBOOK (Serial No. 77695428)

SAFARIBOOK (Serial No. 77769840)

GEEZERBOOK (Serial No. 77701642) (my personal favorite)

LAWYERBOOK (Serial No. 77657413) (where do I sign up?)

DOCTORBOOK (Serial No. 77657383)

ASSBOOK (Serial No. 77622795) (I think I’ll skip on joining that one)

TALKBOOK (Serial No. 76693743)

VETBOOK (Serial No. 77425396)

In addition to challenging applications for marks that incorporate the term “BOOK,” Facebook has also pursued oppositions against applications for MYSHAREWALL (Serial No. 77836062), SHAREWALL (Serial No. 77689405), DRUNK WALL (Serial No. 77482477), and SUPER WALL (Serial No. 77425457), all of which are based on Facebook’s rights in its federally registered trademark WALL (Reg. No. 3723894).  And if you have to ask what a “wall” refers to on Facebook, it’s probably just best if you pick up your Western Electric telephone and politely ask the operator to connect you to anyone else in the entire world.

Oh, and Facebook also owns a pending intent-to-use trademark application for FACE (Serial No. 78980756), which is likely going to be opposed by a company called Think Computer Corporation.  You can read more about that particular dispute here, but needless to say, if Facebook is eventually successful in obtaining a registration for FACE, you can be sure it won’t be shy about asserting its rights.

So, what have we learned today?  Well, “like” it or not, you probably shouldn’t adopt, use, or attempt to register trademarks that include the words “FACE,” “BOOK” and/or “WALL” for services even remotely related to online social networking unless you want to spend more money than you have in your bank account fighting Facebook and its team of highly skilled and well-compensated attorneys.  I know.  As great as BOOK WALL FACE would have been for the name of your revolutionary new social networking site, I think it would be safer if you just tweaked it ever so slightly to remove all three words and replace them with three completely different ones.  And I don’t mean MY TWITTER SPACE.

At the beginning of May 2010, I posted about a trademark dispute that was developing between the State of Texas and a non-profit corporation by the name of The Daughters of the Republic of Texas (“Daughters”) regarding ownership of the trademark ALAMO.  For those of you who haven’t committed all of my previous blog posts to memory, Daughters has operated and maintained The Alamo in San Antonio since 1905 after the Texas legislature enacted a statute directing the Governor of Texas to deliver the Alamo property to the “care and custody” of Daughters “to be maintained by them in good order and repair.”  On October 13, 2009, Daughters filed a federal trademark application seeking registration of THE ALAMO for “museum services.”  The State of Texas evidently got wind of this application and filed a 90 day extension of time to oppose the application while it further investigated its legal rights in THE ALAMO trademark.  The deadline for the State of Texas to file an opposition was July 28, so I was just waiting to see whether The Lone Star State was actually going to pull the trigger and file an opposition against Daughters on the basis that Daughters is not the rightful owner of the THE ALAMO mark.

Well, on July 23, the Texas government ponied up the $300 government filing fee (plus attorneys’ fees) to officially file an opposition against Daughters’ trademark application for THE ALAMO.  The Notice of Opposition (which was amended by the State of Texas on August 11) basically asserts that the State has owned the Alamo property since 1883 and that Daughters acts as a trustee for the State in its preservation and management of the Alamo.  In other words, Texas is arguing that Daughters is merely a licensee of the ALAMO mark, and that by virtue of the fiduciary trustee relationship between Daughters and the State, all use of the ALAMO trademark by Daughters in connection with museum services accrue to the sole benefit of Texas.  Therefore, because Daughters is not the rightful owner of the ALAMO mark, it is not entitled to seek registration of the mark with the Trademark Office.  Also, in the most egregious case of “better late than never,” the State of Texas finally applied to register THE ALAMO for a variety of services (including museum services) a few days after it filed its opposition against Daughters.

I personally think this is a pretty interesting case that isn’t necessarily a slam dunk for either side.  Clearly, the State of Texas owns the Alamo property and Daughters was appointed by law to ensure that the physical Alamo property was preserved as a memorial to those who died defending the property back in 1836.  According to the Notice of Opposition, the revenues generated from the museum, guided tours, and gift shop on the Alamo property are considered State funds that are used by Daughters to preserve the Alamo’s structure and grounds.  What is also abundantly clear is that Daughters is the entity responsible for commercializing the ALAMO name and using it in connection with a museum, gift shop, guided tours, etc.  The question that remains is whether the State of Texas owns the name ALAMO for these services simply by virtue of ownership of a physical piece of property that was already publicly known as “The Alamo” for many years prior to the State of Texas obtaining ownership of the property in 1883.

I tend to believe the answer is no.  Let’s just say that my father owns an old, empty, dilapidated building that used to be a bakery 150 years ago and is still commonly known by the public as the ABC Bakery.  I ask my father if I can open up a restaurant in the old ABC Bakery and he says yes so long as all of the revenues generated by the restaurant are considered his but go to the upkeep of the building.  I agree (I’m not a very good businessman) and open up a gourmet restaurant called the ABC Bakery.  I spend a ton of money advertising my restaurant and it becomes extremely well-known throughout the Untied States for serving the highest-quality food.  Unquestionably, I took what was merely the commonly recognized name of a geographic location and turned it into a trademark for restaurant services.  Does that now mean my father owns the ABC BAKERY trademark for restaurant services by virtue of merely owning a building commonly known as the ABC Bakery?  I think not.  And that’s why I don’t think the State of Texas owns the name ALAMO for the museum services, guided tours, and retail services that are rendered on the grounds of the Alamo site.

But, you know, instead of litigating this dispute, perhaps Daughters and the State of Texas should act in accordance with the Texas state motto (“Friendship”) and just agree to a friendly eating competition down at the famous Big Texan Steak Ranch in Amarillo.  First to finish the 72 Ounce Steak Challenge gets all rights in the ALAMO trademark.  May the biggest appetite win!

About a month ago, I wrote about a trademark dispute that was brewing between Robert Burck (a/k/a “The Naked Cowboy”) and Sandy Kane (a/k/a “The Naked Cowgirl”).  As a refresher, Burck is known for hanging out in Times Square and strumming his guitar wearing only cowboy boots, a cowboy hat, and tight-fitting briefs (you know, he should really look into getting an endorsement deal with Hanes or Fruit of the Loom).  According to his official bio, Burck started using the name NAKED COWBOY on Christmas Day 1997 and very recently obtained a federal registration for NAKED COWBOY for a variety of entertainment services (although he did have a prior registration dating back t0 2002 that was canceled for failure to file a declaration of continued use with the Trademark Office).  Burck has also franchised the name NAKED COWBOY to other naked cowboy wannabes located across the United States for about $5,000 per year.  And, yes, I do find it hard to believe that there are Americans out there who would pay $5,000 a year for the “privilege” of using the NAKED COWBOY name while publicly playing a guitar in practically nothing but their birthday suits.  I guess that college education for the kids will just have to wait.

Sometime long after Burck started using the NAKED COWBOY mark in connection with his services, ex-stripper and comedian Sandy Kane invaded Burck’s turf when she started performing her musical numbers in Times Square wearing only a bikini, boots, and a cowgirl hat, while referring to herself as THE NAKED COWGIRL.  After Kane sanely refused to sign a “Naked Cowboy Franchise Agreement” and pay the required franchise fee, Burck threatened to sue Kane for trademark infringement stemming from her use of the name NAKED COWGIRL in connection with her live music and comedy performances.  And that’s where the story ended.

Until now.  On July 21, Burck filed suit against Kane in the United States District Court for the Southern District of New York (Case No. 10-5539) alleging trademark infringement, unfair competition, false advertising, dilution of a “famous” trademark, and pretty much every other related cause of action Burck’s attorney could think of.  In the complaint, Burck asks that the court (1) issue an order barring Kane from using the NAKED COWGIRL trademark, (2) award monetary compensation in the form of actual damages suffered by Burck, as well as all profits Kane derived from her use of the NAKED COWGIRL mark, and (3) award Burck’s his costs and attorneys’ fees in bringing this lawsuit against Kane.

As I stated in my previous post, I believe Burck has a pretty strong case against Kane for a variety of reasons.  But, I also suggested that Kane may be in the position to cancel Burck’s trademark registration for NAKED COWBOY on the basis of fraud on the Trademark Office because Burck declared in his application that the NAKED COWBOY mark was in use in connection with all of the services listed in the application when it seems that the mark may have only been in use in connection with some of the services.  In my post, I pointed out at least 15 distinct services listed in Burck’s registration that do not appear to have ever been rendered by Burck under the NAKED COWBOY mark.  I also just noticed that Burck represents in his registration that his first use of NAKED COWBOY was in 1991, but that his official bio located on his website claims that his first use of the mark was near the end of 1997.  I’ll concede that Burck may be good at prancing around in his skivvies, but I think he should probably stay away from filing any more trademark applications without the assistance of a trademark attorney (and I happen to know a pretty good one…).

Well, Kane’s attorney obviously must have been reading my blog because on July 30, Kane played a little offense by filing a Petition for Cancellation against Burck’s registration for NAKED COWBOY, alleging fraud on the Trademark Office (Cancellation No. 92052835).  The Petition (to which Burck’s infringement lawsuit is attached as an exhibit) requests that the Trademark Trial and Appeal Board cancel Burck’s registration due to materially false statements knowingly made by Burck during the prosecution of his trademark application, specifically those dealing with his declaration that the mark was in use on all of the services recited therein.  Burck now has until September 8 to file a responsive pleading to the Petition for Cancellation.  If Burck fails to do so, a default judgment will be entered against him and his registration will be canceled.

So, the saga continues and I’ll try to post updates about the case as I come across new information.  And I’ll do so fully clothed.  Trust me, I have no desire to be known as “The Naked Attorney.”

For those of you who have read some of my previous blog posts, you already know of my love-hate relationship with Apple.  Well, the following story has tipped the scales more towards hate.  On July 17, 2008, Apple applied to register APP STORE as a trademark for “retail store services featuring computer software provided via the internet and other computer and electronic communication networks” and “retail store services featuring computer software for use on handheld mobile digital electronic devices and other consumer electronics” (Serial No. 77525433).  After reviewing the application, the Trademark Examining Attorney assigned to the application refused registration of APP STORE on the basis that the mark is merely descriptive of the services rendered by Apple.  The Trademark Examining Attorney specifically noted that the term “app” is “defined as a computer application” and that the definition of the word “store” is “a place where merchandise is offered for retail sale to customers.”  The Trademark Examining Attorney concluded that the combination of those two descriptive terms did not create any “new non-descriptive meaning” and would be “immediately understood as describing a feature, function, purpose or use” of Apple’s retail store services featuring computer software.  Sounds right to me.

In its response to the Trademark Office’s rejection, Apple halfheartedly argued that (1) the word “app” is not merely descriptive because it could be an abbreviation for words other than “application,” such as “apparatus,” “appendix,” and “appointed,” and (2) the word “store” is not merely descriptive because the iTunes App Store is not a traditional brick-and-mortar store or online retail store.  Finally, Apple rather humorously argued that its APP STORE mark “creates a clearly recognizable double entendre” in that APP would “be immediately recognized as a variant of the applicant’s well-known APPLE STORE mark.”  Yeah, right.  “App” is short for “apple.”  Give me a break.  Nobody knows or refers to Apple as “app.”  Not a single person.

After the Trademark Examining Attorney was done cracking up at Apple’s ridiculous and nonsensical arguments, he issued a final refusal to Apple consisting of approximately 145 pieces of internet evidence tending to show that APP STORE would be perceived by the general public as merely a place to purchase software applications.  End of story, right?  Apple waves the proverbial white flag.

Unfortunately not.  Instead, Apple filed a Request For Reconsideration, admitting that APP STORE is, in fact, merely descriptive but that the mark is entitled to registration anyway because it has acquired distinctiveness and secondary meaning.  In other words, Apple argued that the general public would recognize APP STORE as belonging to Apple (and only Apple) because of the extraordinary success of the iTunes App Store, its extensive marketing and promotion of the APP STORE mark, and the unsolicited media coverage of Apple’s services.  In support of its argument, Apple attached a whopping 400 pages of exhibits, including sales figures, advertisements, and media articles.  And you know what?  The Trademark Examining Attorney was actually persuaded by all of Apple’s evidence (or more likely didn’t feel like looking through all of it) and allowed Apple’s application for APP STORE to be published for opposition.

Well, apparently Microsoft was paying close attention to Apple’s APP STORE trademark application because on July 6, 2010, it filed an opposition against the application on the basis that APP STORE is generic for a store that sells software applications and, therefore, is legally incapable of identifying and distinguishing Apple’s services from those of its competitors.  Microsoft specifically attached evidence to its Notice of Opposition indicating extensive third-party use of “app store” in connection with their own services, media articles generically referring to “app store” as a place to purchase applications, dictionary definitions of the words “app” and “store,” and even statements on Apple’s own website in which Apple refers to “apps” in the generic sense.  I also note that I’ve personally never seen Apple use a “TM” next to APP STORE, which you might expect if Apple truly believed it could claim exclusive rights to the phrase.

I could not agree more with Microsoft’s position and, honestly, I think every software application provider should be thanking Microsoft profusely for taking a stand against Apple’s anti-competitive behavior.  I mean, let’s say that I owned and operated a pet store and I decided to not-so-creatively name it PET STORE.  I spend 500 billion dollars over 30 years advertising and marketing my services, and I am known as the best pet store in the world, and my pet store does 100 billion dollars worth of sales each year, and my pet store is featured in thousands of newspapers, magazines, trade journals, and my pet store is written about on thousands of websites, and my pet store is the biggest in the United States.  Guess what?  I still don’t have a trademark!  The fact is that a generic phrase like “pet store” can never become a trademark under any set of circumstances for a store that sells pets, just like “candy store” can never become a trademark for a store that sells candy, “grocery store” can never function as a trademark for a store that sells groceries, and “app store” can never become a trademark for a store that sells apps.  These types of phrases are freely available to any business that wants to use them.

Hopefully, the Trademark Trial and Appeal Board will see right through Apple’s smoke-and-mirror arguments and deny it the monopoly it seeks.  Of course, if you disagree, please feel free to drop a comment.

If you happen to be from New York City or perhaps a frequent tourist there, you may have come across Robert Burck in your journeys through the Big Apple.  Burck, who is best known for strumming his guitar on the sidewalks of Times Square wearing only boots, a 10 gallon hat, and tighty-whities, has been using the name NAKED COWBOY since at least as early as 1998 in connection with his entertainment services.  According to his official bio, Burck has performed throughout the U.S. and internationally, and has been featured in various commercials, music videos, and television programs, not to mention being named “The Ambassador of New York Tourism” (please say it ain’t so).  Furthermore, he has apparently franchised the NAKED COWBOY name to exhibitionists in other cities across the United States for about $5,000 per year (money well spent, I’m sure).  Feel free to check out Burck’s website to learn more about him and to see whether you do, in fact, have a thing for partially nude cowboys who make music rather than rope steer.

Just when you thought New York City only needed (and frankly only wanted) one nude buckaroo roaming the streets entertaining and/or scaring and/or mortifying those who happen to come across him, here comes comedian and ex-stripper Sandy Kane (whose real name is Sandra Brodsky) to provide New Yorkers even more rancher-in-the-raw festivities.   According to a story in the New York Post, the bikini-clad Kane has been appearing and performing in Times Square for several years calling herself THE NAKED COWGIRL.  The story reports that Kane and Burck used to have a good relationship but it turned sour when Kane refused to sign a “Naked Cowboy Franchise Agreement” and recorded a song called “The Cowboy” with another male counterpart.  Burck is now threatening to sue Kane for trademark infringement stemming from her use of the name NAKED COWGIRL in connection with her live music and comedy performances.

Like most ordinary people would after reading this article, I surfed over to the Trademark Office’s website to see whether Burck happened to own a federal trademark registration for NAKED COWBOY.  Sure enough, he applied to register NAKED COWBOY on July 15, 2009 and was granted a registration for the trademark just over a month ago on May 25.  My search also revealed that Burck owned a registration for NAKED COWBOY dating back to 2002, but is was canceled in June 2009 for failure to file a declaration of continued use with the Trademark Office.  Hey, keeping those skin-tight briefs Clorox-white would be enough for any man to forget to renew his trademark registration!

In all seriousness, I think Burck has a pretty strong case against Kane for trademark infringement and unfair competition, especially considering the appreciable amount of fame and recognition Burck’s NAKED COWBOY name enjoys throughout New York and the exposure he’s had throughout the U.S.  Clearly, Burck doesn’t own the concept of dressing up (or is it undressing?) like a cowboy and performing music in the middle of Times Square.  Any freak-show is free to do that.  However, the issue is that Kane’s use of the name NAKED COWGIRL tends to imply an association or affiliation with Burck such that the public may mistakenly assume that Burck sponsors or endorses Kane and her performances.

But, Kane might have some leverage with Burck after all.  In reviewing Burck’s trademark registration for NAKED COWBOY, I note that the mark is registered for the following slew of services:

Educational and entertainment services, namely, providing motivational and educational speakers; Entertainment in the nature of circuses; Entertainment in the nature of dance performances; Entertainment in the nature of live performances by a musical personality/performer; Entertainment in the nature of live radio personality performances; Entertainment in the nature of on-going television programs in the field of news, comedy, variety; Entertainment in the nature of prerecorded sex-oriented, joke-oriented, insult-oriented messages by telephone; Entertainment in the nature of television news shows; Entertainment in the nature of live musical group, television comedy series, ethnic festival; Entertainment services, namely, live, televised and movie appearances by a professional entertainer; Entertainment services, namely, personal appearances by a celebrity, radio-TV personality, actor, movie star, model, sports celebrity; Entertainment services, namely, providing a radio program in the field of entertainment, comedy, motivational speaking via a global computer network; Entertainment services, namely, providing a television program in the field of entertainment, comedy, motivational speaking via a global computer network; Entertainment services, namely, providing an on-going radio program in the field of news, comedy, variety; Entertainment services, namely, providing an on-line computer game; Entertainment, namely, a continuing comedy, variety show broadcast over television, satellite, audio, and video media; Entertainment, namely, live music concerts; Entertainment, namely, live performances by musical bands; Entertainment, namely, television news shows; Multimedia entertainment software production services; Radio entertainment production; Radio entertainment services, namely, radio programs featuring performances by a person or individual, fictional character, radio personality, TV personality

As far as I can tell from Burck’s website and bio, it does not appear that Burcke actually has ever rendered, or is currently rendering, the services I have bolded above.  Therefore, Burck’s registration may be subject to cancellation on the basis of fraud on the Trademark Office in that Burck declared in his application that the NAKED COWBOY mark was in use in connection with all of the services when perhaps the mark was actually only in use in connection with some of the services.  Kane may be able to use the threat of a cancellation proceeding to help her reach a satisfactory settlement with Burck that doesn’t include paying Burck $5,000 per year to be a Naked Cowboy franchisee.  Just a thought.

Whatever happens, the naked truth is that (1) Kane shouldn’t use the NAKED COWGIRL name if there is a likelihood of confusion with Burck’s prior use of NAKED COWBOY, and (2) Burck, well, he should just put on some pants already.

This week’s post is in response to a fellow intellectual property attorney’s inquiry asking my opinion on the following matter (which he probably would have preferred in a 3-4 sentence email, but oh well).  On May 4, 2009, a company out of California called Pulser Music Services, Inc. (“Pulser”) filed an application to register the trademark RDIO.  This application is pending for a variety of products and services, most notably “streaming of audio materials over the Internet, mobile devices, wireless internet networks or systems, and other computer and electronic communication networks,” “music download services provided over the Internet, mobile devices, wireless internet networks or systems, and other computer and electronic communication networks,” and “broadcasting and transmission of streamed and downloadable digital audio and video content via computer and other communication networks.”  I don’t know about you, but if I saw the RDIO mark in promotional materials that advertise and explain Pulser’s services, I would probably pronounce the mark as the generic word “radio.”  However, on Pulser’s website, it claims that the mark “is a combination of the words radio and audio, and we pronounce it r-dee-o.”  In my humble opinion, this is absolute bologna since RDIO does not incorporate any phonetic element of the term “audio” that is separate and distinct from any phonetic element of the term “radio.”  It’s merely “radio” spelled by your average 4 year old.

Anyway, about three months later, a trademark examining attorney at the Trademark Office reviewed Pulser’s application and specifically requested that Pulser “specify whether the letters RDIO have any significance in the computer software, internet, or entertainment industry or as applied to the goods/services described in the application.”  In response, Pulser bluntly indicated that RDIO “has no significance in the relevant trade or industry or as applied to the goods/services listed in the application.”  Relying on Pulser’s representations, the Trademark Examining Attorney allowed Pulser’s application to be published for opposition on September 30, 2009 (it wasn’t challenged by any third party) and the Notice of Allowance was issued on January 12, 2010, thereby giving Pulser six months to provide proof to the Trademark Office that it is actually using the mark in interstate commerce in connection with all of the products and services recited in the application.

If you couldn’t already tell from my tone, I strongly believe the Trademark Office made a gross error in not refusing to register Pulser’s RDIO mark on the basis that it is generic for many of the products and services listed in the application.  As many of you probably already know, generic terms are not trademarks and can never be protected if their primary meaning is the actual name of the product or service with which they are being used.  For instance, the word “soap” for body cleansers is generic, as is the word “pencil” for certain writing utensils.  This tenet also holds true for misspellings of generic terms that do not materially change their common meaning.  For example, the word “photo” does not become any less generic for photography products and services by spelling it “foto” unless that spelling alters the meaning or connotation of “photo.”  That is why the owners of FOTO FANTASY (Reg. No. 2769186), FOTO QUICK (Reg. No. 2997542), and FIRST FOTO (Reg. No. 2926355) were required to disclaim exclusive rights to use “photo” apart from the marks as a whole.  Unquestionably, the word “foto” in these situations is simply an intentional misspelling and nothing more.

Similarly, Pulser’s RDIO mark is clearly the word “radio” with the second letter missing.  Contrary to Pulser’s assertions, the general consuming public would primarily recognize RDIO as merely a misspelling or variation of “radio” when used in connection with Pulser’s audio broadcasting and streaming services.  Even if you believe Pulser’s nonsensical statement that RDIO is a fusion of “radio” and “audio” that should be pronounced “r-dee-o,” wouldn’t it have made more sense for Pulser to apply to register ARDIO?  Now, that looks like a combination of those two words.  But, of course, it doesn’t look much like “radio,” now does it?  It’s almost like Pulser came up with it reasoning for choosing RDIO after the fact in order to help bolster its defense to a possible challenge.

In sum, RDIO is no more a trademark for audio broadcasting services than FOTO is for photography services.  If u disagre, plz feel fre 2 leav a komment.