The Board affirmed a refusal to register the mark WORLD’S BIGGEST SMALL GROUP for radio broadcasting services (in International Class 38), finding that applicant's specimens of use failed to show that the phrase served as a source indicator for radio broadcasting services, as opposed to applicant's own radio program. In re WAY Media, Inc., Serial No. 86325739 (June 3, 2016) [precedential].
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A service mark specimen of use is acceptable if it either (1) shows the mark used or displayed
as a service mark in the sale of the services, which includes use in the course of rendering or performing the services, or (2) shows the mark used or displayed as a service mark in advertising the services, which encompasses marketing and promotional materials. Here, applicant contended that its specimens of use satisfied both tests.
Applicant focused on four pages of material, including several Internet website pages referring to a radio program and YouTube screenshots that purportedly depicted the mark in a "radio broadcast booth environment." [See picture above]. The Board noted that the TMEP provides guidance as to the meaning of "radio broadcasting services:"
“Radio broadcasting services” (Class 38) would be an appropriate identification when a radio station uses a mark, such as call letters, to indicate the source of its broadcasting services generally. On the other hand, if an applicant is using the name of a weekly comedy television show as a mark, “television broadcasting services” would not be appropriate because the mark does not serve to identify and distinguish the electrical transmission of the program. Instead, the applicant should identify the services as “television entertainment services in the nature of an ongoing series of comedy programs” (Class 41).
Here, the Board found that the phrase WORLD’S BIGGEST SMALL GROUP, as it appears on the specimens, refers to applicant’s Bible-reading and devotion program. There was no direct association in the specimens between WORLD’S BIGGEST SMALL GROUP and radio broadcasting services. In short, "[n]othing on these pages demonstrates that consumers would perceive the phrase WORLD’S BIGGEST SMALL GROUP as a source indicator for radio broadcasting services."
And so the Board affirmed the refusal.
TTABlog comment: The original application also included entertainment, e-mail newsletter services, and website-related services in International Class 41 and charitable outreach services in International Class 45. Those services were divided out and the divided application proceeded to registration, based upon the same specimens of use as in this case.