Applicant Rogowski performs music under the name “Active Reasoner” and posts videos of his performances on YouTube. In January 2007, Rogowski filed an intent-to-use application to register the mark ACTIVE REASONER for “audio recordings featuring music.” In 2010, Rogowski submitted a statement of use and a specimen consisting of a photograph of his computer screen showing a YouTube video. The Examining Attorney refused the registration on the ground that Rogowski’s specimen did not show the mark being used in commerce. Applicant appealed the ruling to the TTAB, which affirmed the refusal to register.
The TTAB held that a “screen shot of a video performance uploaded on YouTube” does not show Rogowski’s mark used in connection with the goods listed in the application, namely, “audio recordings featuring music.” Rogowski stated that his YouTube channel displayed his mark prominently and that his audio recordings featuring music may be accessed and downloaded from the channel. Rogowski’s mark appeared in the top left corner of the screen in addition to his YouTube channel name, along with the title of each song he uploaded to the website. Although, “on its face, the specimen include[d] applicant’s mark used in connection with an uploaded video of a musical performance that may be streamed and viewed via the YouTube website,” the TTAB held that this showed a video performance, and did not show the audio recording being used in commerce.
Specifically, the TTAB pointed to the inability for users to download the music directly from the YouTube website. Rogowski argued that users can easily use third-party software to record songs from YouTube videos, but the Board rejected this argument. While it “acknowledge[d] the advent and certainly the trend of music being offered in downloadable formats . . . in lieu of the traditional trade channels” for sound recordings, it nonetheless held that Rogowski’s lack of a download link on his YouTube channel meant that consumers did not have notice that the identified goods were available for download. The TTAB analogized it to an online retail website submitted as a “point-of-sale” specimen that fails to include a means for ordering the goods or services.
This case reminds us that the PTO often takes a strict approach with specimens of use. In this case, despite the fact that the applicant’s audio recordings are primarily consumed via a streaming video website, a specimen showing the streaming video without some additional clear reference to the ability to download the applicant’s audio recordings will not suffice to show use of the mark in commerce for such goods.