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Serial Trademark Troubles: No Registration for the Popular Podcast

Serial is perhaps the biggest success story in the history of podcasting. But the producers of Serial have had a bit less success at the U.S. Patent and Trademark Office. Since shortly after the show debuted in Fall 2014, they have been trying to convince the USPTO to register SERIAL as a trademark for “Entertainment in the nature of an ongoing audio program featuring investigative reporting, interviews, and documentary storytelling.” Thus far, they haven’t succeeded. Here’s the story of the SERIAL trademark.

By the way, Serial fans can feel free to read this podcast in Sarah Koenig’s voice. I’m not going to stop you.

For a refresher on trademarks Check out my podcast episode What Is A Trademark?

The SERIAL Trademark

The initial application for SERIAL was filed on November 14, 2014. That link goes to the application for SERIAL as a word mark; they also filed two applications to register the Serial logo in color and black and white. Those applications have run into the same issues I’m discussing in this post.

On February 10, 2015, the USPTO issued an “Office Action” (which is essentially a rejection letter) rejecting the SERIAL application on the grounds that the mark was “merely descriptive.”

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services.

Marks that are “merely descriptive” are not eligible for placement on the USPTO’s Principal Register of Trademarks.

The February 2015 Office Action included a side comment that “the applied-for mark appears to be generic in connection with the identified services.”

Generic vs. Descriptive

“Generic” and “Descriptive” are not the same thing in trademark law.

A descriptive trademark, as defined above, is potentially eligible for a lower level of legal protection. And a trademark that is descriptive can “acquire distinctiveness” over time and become entitled to full protection.

However, there is no such thing as a generic trademark. Generic terms are not brands; they are the words that are used to describe a product or service. “Taco Shop” is not a trademark; it’s a generic term.

So, to the extent that SERIAL is a generic term, it is not, nor will it ever be, eligible for trademark protection.

OK, Back to SERIAL

Serial’s attorneys have gone back and forth with the USPTO several times over the course of this filing. They’ve offered arguments to the effect that, even if SERIAL is descriptive, it has acquired distinctiveness due to the fame of the show, and that the mark is not generic as that term is understood in trademark law.

On the genericness point, Serial’s attorneys’ most recent filing stated:

The generic term here is “audio program,” or, more specifically, “podcast.” The Examining Attorney still has not cited any usage of the term “SERIAL” to describe a recurring podcast other than as a trademark to describe Applicant’s SERIAL podcast.

With respect to descriptiveness, they stated:

The second season of the podcast offered under Applicant’s Mark has ranked number one on the iTunes charts for all but one day since its debut on December 10, 2015…During the second season, daily downloads of the SERIAL podcast were generally in excess of 570,000 and reached as high as 1.7 million per day. In total, as of February 18, 2016, episodes of Applicant’s SERIAL podcast have been downloaded over 173 million times…

Consumer recognition of the term “SERIAL” as a trademark and source identifier for Applicant and Applicant’s podcast was so vast and significant that Applicant’s SERIAL podcast became the subject of numerous unsolicited media stories. In less than 18 months since its debut, Applicant’s SERIAL podcast has been mentioned in over 12,000 media stories…Such extensive media recognition of Applicant and Applicant’s services offered under Applicant’s Mark—much of which was submitted with Applicant’s response to the Office Action dated February 10, 2015—are a reflection of the pervasiveness of said services and, it follows, widespread consumer recognition of the function of the term “SERIAL” as a trademark identifying Applicant and Applicant’s services.

On March 22, 2016, the USPTO issued a Final Action rejecting these arguments and, once again, holding that SERIAL is generic and that their evidence of acquired distinctiveness was insufficient.

Regarding genericness, the Final Action notes that “in the applicant’s industry, a serial refers to an audio program that is broadcast in separate parts over a period of time.” It also states that:

The applicant’s website, which is attached to the first Office Action and incorporated by reference herein, states, “Serial is a podcast from the creators of This American Life, and is hosted by Sarah Koenig. Serial tells one story – a true story – over the course of an entire season. Each session, we’ll follow a plot and characters wherever they take us. And we won’t know what happens at the end until we get there, not long before you get there with us. Each week we bring you the next chapter of the story. So it’s important to listen to the episodes in order, starting with Episode 1.” Applicant’s website explains that the applicant’s audio program is a serial.

That last sentence is a killer. The show may be “Serial,” but it is also a serial.

At that point, the question of whether SERIAL has “acquired distinctiveness” is essentially moot, as “no amount of purported proof that a generic term has acquired secondary meaning can transform that term into a registrable trademark or service mark.”

However, the Final Action does state that the evidence submitted by Serial’s attorneys “is insufficient to show acquired distinctiveness because of the highly descriptive nature of the mark in association with the applied-for services.”

So the folks behind Serial can either allow the trademark application to be abandoned or appeal this ruling to the USPTO’s Trademark Trial and Appeal Board. Given the success of the show and the value of the Serial brand name (if it is a brand name, and not a generic term), I expect an appeal to be forthcoming.

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