Concluding that the phrase THIS IS FOR MY GIRLS appears on the specimens of record solely as a song title, the Board affirmed a refusal to register the proposed mark for "entertainment information; musical composition for others; production of musical sound recording." In other words, the specimens of use did not evidence an association between the mark and the recited services. In re Di-Namic Records, Serial No. 87399929 (July 13, 2022) [not precedential] (Opinion by Judge Marc A. Bergsman).
The Board observed that. "[i]n order to establish the requisite "direct association" . . . the specimen must contain a reference to the services and the mark must be used on the specimen to identify the services and their source." Applicant Di-Namic submitted five different specimens, identified as "website pages and sheet music." Nothing in the specimens created a nexus with or referred to the recited services.
Di-Namic next submitted copies of five different synchronization license agreements, but those agreements merely referred to the proposed mark as the title of a song. According to Di-Namic, however, the proposed mark is "much more." It pointed to to the phrase" THIS IS FOR MY GIRLS SYNCHRONIZATION LICENSE as creating a direct association between the mark and the services. The Board was unimpressed.
The Board distinguished three prior decisions cited by Di-Namic because they did not address the same specimen issue, nor did they involve an attempt to register a song title. It rejected Di-Namic's argument that the proposed mark is not being used merely as a song title, but also to signify that it offers musical composition services as a logical prerequisite of the musical composition being licensed. It noted that, under Di-Namic's logic, "every song is a potential service mark identifying the applied-for services because someone might want to license it."
And so, the Board affirmed the refusal under Sections 1 and 45 of the Trademark Act.
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