USPTO Rejected 'Podcast' Trademark Registration

I submitted a proposal today urging the RSS Advisory Board to support the common usage of "podcast" and "podcasting" as generic terms that cannot serve as trademarks for Apple Computer or any other entity.

Since its coinage in 2004, the word "podcast" has referred to all audio files delivered as RSS enclosures. This usage became so popular that "podcasting" was declared the 2005 word of the year by the editors of the New Oxford American Dictionary, who gave it the following definition:

A digital recording of a radio broadcast or similar program, made available on the Internet for downloading to a personal audio player.

I found something in the U.S. Patent and Trademark Office Database that bolsters my claim: On Aug. 29, a USPTO trademark examiner rejected an attempt to register "podcast" as a trademark.

Paul Fowlie of Common Mode Inc. attempted to trademark "podcast" on March 8 for the following class of goods and services:

SOUND RECORDING FEATURING AUDIO INFORMATION FOR DOWNLOAD-SPOKEN WORD AND MUSIC

Miller writes that "podcast" is "merely descriptive," meaning that it describes an entire class of goods and thus cannot function as a trademark:

The term PODCAST may be defined as:
"A free, downloadable audio file that can be listened to on your computer -- where you can burn it to a compact disc -- or on an MP3 player or iPod to enjoy on planes, trains and automobiles. Podcasts were originally thought of as amateurish audio versions of blogs, but no longer; ESPN, NPR, the BBC, Newsweek, news commentators and other highly respected people have podcasts readily available." (See attached definition from www.netlingo.com)
Or
"An audio programme in a compressed digital format, delivered via an RSS feed over the Internet to a subscriber and designed for playback on computers or portable digital audio players, such as the iPod." (See attached definition from http://en.wiktionary.org)
The mark immediately describes and names the characteristics and features of the goods. Accordingly, the mark is refused registration on the Principal Register under Section 2(e)(1) of Trademark Act.
Additionally, the examining attorney submits that the term PODCAST may be unregistrable because it is generic or informational for applicant's services. Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001); In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999); In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987); H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986). Generic terms are by definition incapable of indicating a particular source of the goods or services, and cannot be registered as trademarks; doing so "would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are." In re Merrill Lynch, 828 F.2d at 1569, 4 USPQ2d at 1142. Applicant's mark is so common in the field that it appears to be unregistrable. (See attached evidence from a search of the Internet). The attached sample of the Internet evidence submitted is evidence of the public's perception of the term.

As evidence, Miller attached the Wiktionary and NetLingo definitions of podcast, a Google search for podcast and audio and recording and trademark registration attempts for "Emergency Podcast System," "Cherry-Picked Podcasts That Don't Suck," "What I Want Podcasting," "Podcast Realty," "VarBusiness Podcast" and "EPodcast."

Rss · Podcasting · 2006/09/27 · 6 COMMENTS · Link

Comments

The rejection is irrelevant. iPod is trademarked by Apple and podcasting can confuse users into thinking it has something to do with Apple. MHO.

#1 · Randy Charles Morin · 2006/09/27

Randy,

What is the patent law basis for you to say "the rejection is irrelevant"? That's a very strong statement I would like to understand better from a legal perspective.

The way I read the rejection, USPTO just established a significant precedent by ruling that "podcast" is a generic term and as such probably unregisterable. But you say that ruling isn't relevant?

I'm a just a lay person on these matters; are you saying that Patent Law ignore ruling precedents? When you say, "MHO", is the O based on a legal understanding of the situation?

If Apple were going after misuse of "iPod", I could understand the problem. They don't have rights to use of the word "pod", however. If they did...

- My podiatrist is going to be in big trouble.
- The phrase "peas in a pod" will become off-limits outside of Cupertino.
- The Christian metal band P.O.D. is really screwed, as is the label that marketed them long before the iPod was invented.
- "Revenge of the Pod People" will be pulled off the shelves at Blockbuster and Netflix.
- The Professional and Organizational Development (POD) Network in Higher Education is going to get a letter from Apple.
- As will the Pod restaurant in Philly,
- The Pod club in Dublin,
- The sellers of storage containers at pods.com,
- Anybody who uses the acronym for Print On Demand,
- ArcadePod.com,
- PODPublishing (podgallery.com),
- The pod camera platform,
- Sticky Pod camera mounts,
- www.crunchpod.com,
- and Hal 9000 for refusing to open the pod bay doors.

Okay, just having a bit of fun with it. :) Seriously though, I don't see that Apple can go after people for using the word "pod". Do you?

#2 · Mark · 2006/09/27

The rejection is irrelevant. iPod is trademarked by Apple and podcasting can confuse users into thinking it has something to do with Apple.

If that were the case, the trademark examiner would have included that reason in her rejection of the "podcast" trademark.

#3 · Rogers Cadenhead · 2006/09/28

My reasoning is simple. Podcast and podcasting are generic terms, so you can't trademark them. iPod is not and is trademarked. Any use of podcast or podcasting that a court deams confusing (vis-a-vis the Apple iPod trademark) is a trademark violation. The battle isn't worth fighting.

#4 · Randy Charles Morin · 2006/09/28

As someone who got a registered trademark in the Spring after going throught the year and a half process, I can tell you that too much is being made of the variouss records relating to podcast in the USPTO site. Few trademarks go through the first time. You get two more shots after the first rejection. It's almost impossible, even for a trademark attorney, to pick the correct categories for many tech and internet products and services. You can't even rely on prior trademarks, since they have been changing the definitions constantly in that area.

What we did was just submit whatever, without worrying too much about it. Then you get the rejection. At that point you get on the phone to the attorney at the patent office who's handling your trademark, and (s)he tells you what you need to do. You do it. You get approved. The language used in the written communications from the USPTO is formalized and fixed, and not as scary as it sounds.

Another thing: there are use trademarks and registered trademarks. Use trademarks are governed by state law. If you have a use trademark, you can usually get a registered trademark. The fact that others were infringing your use trademark doesn't disqualify it from federal registration. The initial examination by the USPTO attorney is just based on the eqivalent of a Google search. Again, this kind of rejection is common, and not as significant as you're making it out to be. Apple may well lose in court in claiming a use trademark on podcast, but that will depend on the findings of the trier of fact, and the USPTO will usually go along with that. The USPTO has not seen all the eveidence yet.

There was some intelligent discussion of the podcast case in a News.com article the other day, where attorneys expressed doubts about Apple's prospects, but the blogosphere's take on it has been way off the mark in their interpretation of USPTO records and the ultimate reasons that Apple's claims will probably fail.

#5 · Mark · 2006/10/01

>>>I found something in the U.S. Patent and Trademark Office Database that bolsters my claim: On Aug. 29, a USPTO trademark examiner rejected an attempt to register "podcast" as a trademark.

Paul Fowlie of Common Mode Inc. attempted to trademark "podcast" on March 8 for the following class of goods and services:

SOUND RECORDING FEATURING AUDIO INFORMATION FOR DOWNLOAD-SPOKEN WORD AND MUSIC

To see the registration, search the trademark database for the registration with serial number 78831795. On the registration page, click the "TDR" link to see USPTO trademark attorney Monique C. Miller's refusal of the registration. Miller writes that "podcast" is "merely descriptive," meaning that it describes an entire class of goods and thus cannot function as a trademark>>>

You don't have much of a case when you bandwagon jump and make a claim to something that had existed worldwide for years before you tried to claim it. Fowlie is a recording engineer in NJ with no connection to podasting beyond engineering some, except for this attempt. Google him and you come up with 3 hits, none previous to this. Likely Miller also recognized that he had as much claim to the term as he does to iMac, Cupertino, and Boston Red Sox.

#6 · jladd · 2009/01/06