Screen shot of YouTube webpage not proper specimen of use absent download link

Gary J Rogowski filed an intent-to-use application on January 16 2007 for registration of the mark ACTIVE REASONER in standard characters for “audio recordings featuring music”. The application was allowed on November 20 2007 and the applicant was granted five extensions to file the statement of use. On November 5 2010 the applicant submitted as a specimen of use a photograph of a screen shot of a webpage from the third-party website YouTube. 

The examining attorney objected to the specimen of use on the ground that “a video recording is not necessarily an audio recording”, and “[a]lthough a video recording may include audio components, the main purpose of a visual recording is to present visual content, whereas the main purpose of an audio recording is to provide audio content”. The examining attorney also objected to the specimen on the ground that it did not identify any tangible musical recording or downloadable audio recording. The examining attorney alleged that the specimen identified a “non-downloadable musical video performance that has been uploaded onto, or is streamed on the YouTube website in International Classes 038 and 041, respectively” (beyond the scope of the goods identified in the application). The specimen “failed to indicate that the audio recording may be downloadable”.

In its brief on appeal, the applicant described the specimen submitted with the statement of use as “... a photograph of my computer screen showing my YouTube channel for my mark, ACTIVE REASONER. It is at my YouTube Active Reasoner channel that my ‘audio recordings featuring music’ may be accessed, and downloaded”. During ex parte prosecution, the applicant argued that “I, and many others have downloaded my music directly from YouTube. There are many computer programs available for free, on the internet, which enable the user to download music and video”.

The TTAB found that the submitted specimen on its face merely displayed the applicant’s mark in connection with an uploaded video of a musical performance that may be streamed and viewed though the YouTube website. The specimen also was described as follows:

• The applied-for mark, ACTIVE REASONER, appears in the top left corner of the screen print. Underneath the proposed mark, it reads “activereasoner’s Channel”. In close proximity to the left of the mark is a button labelled “Subscribe”. 
• On the right side of the specimen is a link which reads “Edit My Playlist”.  
• The applicant’s proposed mark appears again under the wording “Back to Playlist” accompanied by the following: “Here are my songs presented in the order they were released on YouTube”. In successive order, the title of each song appears in hyperlink format.    

After considering these facts, the TTAB concluded that the specimen failed to show use of the mark with the goods. It began its analysis with a review of the specimen requirements set forth in Section 1(d)(1) of the Trademark Act, 15 USC § 1051(d)(1). This requires that the applicant file a “specimen” or facsimile “of the mark as used in commerce”. The TTAB further held that, “to be considered used in commerce, the mark must be ‘placed in any manner on the goods or their containers or the displays associated therewith… and the goods are sold or transported in commerce…’ 15 USC § 1127”.

Based on these statutes, the TTAB held that the submitted specimen “does not show the required correspondence between the mark and the identified goods being offered for sale or transport in commerce”. The inadequacy of the submitted specimen was deemed similar to “online retailing situations in which a webpage specimen fails to show a means for ordering the goods or services” and citing In re Osterberg (83 USPQD 1220, 1224 (TTAB 2007)) and In re Genitope Corp (78 USPQ2d 1819, 1822 (TTAB 2006)). The TTAB found that the “applicant’s specimen does not include a ‘download’ or similar link to put the consumer on notice that the indentified goods (‘audio recordings featuring music’) are indeed available for download or the equivalent thereof”. 

The TTAB acknowledged the “applicant’s intent and his assertion that viewers of his uploaded videos on YouTube may use third-party software such as RealPlayer to record the audio portions of the videos and ultimately transfer this music file to an MP3 player or other devices and formats”. However, the TTAB found that, “in the absence of a ‘download” link or equivalent thereof, the applicant’s specimen on its face fails to show use of his mark in commerce for the identified goods”. 

Because no link was visible on the specimen, the TTAB affirmed the examining attorney’s refusal to register the mark. 

Linda S Chan, Arent Fox LLP, New York