New York City tour bus operator, The Ride LLC, offers a sightseeing service around Manhattan that is memorable for having street performers break into song or dance at random points when the bus passes them. As this unique feature of the tour service had attracted significant positive recognition, The Ride applied to register it as a trademark. While, in recent years, the Trademark Trial and Appeal Board (TTAB) has registered a wide array of non-traditional marks, including motion marks, it does require that the non-traditional mark clearly defined and be shown to function as a trademark. In this case, the TTAB ultimately found that the street performer feature to be unregistrable, at least as depicted in the application.
The application drawing page depicted the mark as follows:
The application describes the mark as follows:
The mark consists of the live visual and motion elements of the trade dress of a guided bus tour in which as the bus approaches at least one predetermined location on the tour an entertainer who is dressed as a banker walks normally along the street and then performs a tap dance routine dancing act when the bus stops at the predetermined location as viewed from inside of the bus. The drawing shows two sequential freeze-frames of the mark, in which the top frame shows an entertainer dressed as a banker walking along the street on the side of the bus and in which the bottom frame shows the entertainer performing a tap dance routine at the predetermined location. Dotted lines in the drawing show placement of the mark and are not part of the mark.
The examining attorney refused registration, and the TTAB affirmed, on the ground that (1) the description of the mark is incomplete, (2) the specimens do not match the drawing, and (3) the proposed mark fails to function as a service mark.
With respect to the description of the mark, the PTO found many problems. First, Rule 2.37 requires that the description of the mark indicate whether the mark is in “standard character.” Even to repetitive motion marks must comply with this rule and applicant failed to indicate that the mark is not a standard character mark. Second, the description of the “banker” is not sufficiently clear. The figure in the drawing is a man in a suit with a briefcase, which is not necessarily a “banker,” and the description fails to actually describe the appearance of the figure. Further, the description does not mention the bus windows or passengers. Consequently, the description does not match the visual appearance of the drawing. Third, the description indicates that mark consists of live visual motion elements. However, the description fails to indicate whether the trade dress is a three-dimensional mark or is a two-dimensional mark that can be interpreted as three dimensional. Nor does it show the progress of the motion element. So, the description is impermissibly vague.
With respect to the specimens, The Ride submitted the following as specimens:
None of these display the motion mark as depicted in the drawing. The TTAB found that the outside of the bus, the talking guide, and delivery man are not shown in the drawing at all and are therefore not acceptable. Similarly, the photograph of the suited tap dancer does not match the figure or motions shown in the drawing. And, the video files do not include the freeze frames of the drawing, as required by the rules. Further, the video files do not show a repetitive motion that is encompassed within the drawing. Therefore, the TTAB concluded, the specimens did not show use of the mark as depicted in the drawing acting to identify the source of Applicant’s services as required by TMEP § 1301.04(f).
Finally, the TTAB found that consumers are not likely to perceive the motion mark as a source identifier. The Ride submitted survey evidence allegedly showing consumer association of the street performers with applicant’s tour bus service. However, the TTAB discounted the surveys as being unreliable. First, the survey universe consisted solely of past customers of The Ride, and so were biased in applicant’s favor. Second, the survey administrators did not conduct a “mini course” for participants to confirm that respondents understand whether something functions as a mark. Third, the questions asked in the survey were about street performers generally and did not connect to the actual drawings depicted in the application. Indeed, the surveyed respondents could have viewed the street performers as being part of The Ride’s service rather than being its service mark. In light of these deficiencies, the survey did not evidence consumer recognition of the motion mark shown in the drawing as identifying The Ride’s services. Accordingly, the TTAB affirmed the refusal of the application.
The case is In re The Ride LLC, 2020 USPQ 2d 39644 (TTAB 2020).
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