DIRECTV Sports Networks, LLCv.Heng Dai Media, LLC

Trademark Trial and Appeal Board

Jan 2, 2015

No. 91208501 (T.T.A.B. Jan. 2, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: January 2, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

DIRECTV Sports Networks, LLC
v.
Heng Dai Media, LLC
___

Opposition No. 91208501
to Application Serial No. 85523657
___

Dori Ann Hanswirth, Benjamin A. Fleming and Timothy J. Lyden of Hogan Lovells
US LLP for DIRECTV Sports Networks, LLC.

Paul W. Kruse of Bone McAllester Norton PLLC for Heng Dai Media, LLC.
______

Before Mermelstein, Adlin and Hightower, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:

Heng Dai Media, LLC (“Applicant”) seeks registration of the mark ROOTS
RADIO, in standard characters and with “radio” disclaimed, for “entertainment
services, namely, providing on-going radio programming in the field of music.”1 In
its amended notice of opposition, DIRECTV Sports Networks, LLC (“Opposer”)

1 Application Serial No. 85523657, filed January 24, 2012, under Section 1(b) of the
Trademark Act, based on Applicant’s intent to use the mark in commerce.
Opposition No. 91208501
2
alleges prior use and registration of ROOT SPORTS and variations thereof2 for
“regional cable and satellite television networks that broadcast live sports events,
entertainment, and other original content.” Amended Notice of Opposition ¶ 2. As
grounds for opposition, Opposer alleges that use of Applicant’s mark would be likely
to cause confusion with Opposer’s ROOT SPORTS marks, and that Applicant’s
mark is generic for or merely descriptive of Applicant’s services. In its Answer,
Applicant denies the salient allegations in the amended notice of opposition and
asserts several “affirmative defenses” which are in fact merely amplifications of
Applicant’s denials.
The Record
The parties are commended for stipulating to the introduction of testimony
by affidavit.3 The record consists of the pleadings, the file of the involved application
and the following:
The testimony affidavit of Patrick Crumb, Opposer’s
President, and the exhibits thereto (“Crumb Aff.”)
(TTABVue Dkt. No. 15);

Opposer’s Notice of Reliance (“NOR”) No. 1 on its six
pleaded registrations (TTABVue Dkt. No. 16);

Opposer’s NOR No. 2 on its three pleaded and now-
abandoned applications (TTABVue Dkt. No. 17);

2 Registration Nos. 4122677, 4122795, 4122673, 4122678, 4122796 and 4122672, all of
which issued in 2010 or 2011, and all of which are for, inter alia, distribution or streaming
of television programming or audio or video materials, or variations of those services.
Opposer also pleaded ownership of several pending applications for ROOT SPORTS or
variations thereof, but those applications have been abandoned.
3 Stipulation of March 12, 2014 (TTABVue Dkt. No. 14); Board’s Order of August 19, 2014
(TTABVue Dkt. No. 28).
Opposition No. 91208501
3
Opposer’s NOR No. 3 on 92 third-party registrations
(TTABVue Dkt. No. 18);

Opposer’s NOR No. 4 on printed publications and Internet
materials (TTABVue Dkt. No. 19);

Opposer’s NOR No. 5 on Applicant’s responses to
Opposer’s requests for admission (TTABVue Dkt. No. 20);

Opposer’s NOR No. 6 on its discovery deposition of
Applicant pursuant to Fed. R. Civ. P. 30(b)(6) through
Applicant’s managing member John Walker (“Walker
Tr.”), and the exhibits thereto (TTABVue Dkt. No. 22);

The testimony affidavit of Mr. Walker and the exhibits
thereto (“Walker Aff.”) (TTABVue Dkt. No. 23);

Applicant’s NOR on its involved application, its
uninvolved registration for the mark MUSIC CITY
ROOTS and Internet materials (TTABVue Dkt. No. 26);
and

Opposer’s NOR No. 7 on Office Actions issued in
connection with three uninvolved applications (TTABVue
Dkt. No. 27).

Inexplicably, Applicant designated the entire Rule 30(b)(6) deposition
transcript as “confidential” under the Board’s standard protective order (“SPO”),
even though there appears to be no testimony which qualifies under the terms of
the SPO, and even though the testimony includes discussion of publicly-available
facts and materials, such as Applicant’s website and advertising. Because of
Applicant’s over-designation, it is unclear what is truly confidential, if anything.
Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1402-03 (TTAB
2010). Applicant is allowed until THIRTY DAYS from the mailing date of this
order to re-file the transcript and Opposer’s briefs, this time redacting only
Opposition No. 91208501
4
information which qualifies as truly confidential under the SPO, failing which all
materials designated by either party as “confidential” will be made publicly
available.
The Parties
Opposer operates three “ROOT SPORTS-branded regional sports networks” –
ROOT SPORTS Northwest, ROOT SPORTS Pittsburgh and ROOT SPORTS Rocky
Mountain – which offer “live and recorded sports programming, outdoors shows,
entertainment, news, documentary, variety, and paid programming.” Crumb Aff.
¶¶ 6, 7. The networks are distributed not only via satellite systems, but also cable
television systems. Id. ¶ 37. Opposer has used the ROOT SPORTS mark since April
1, 2011 in connection with these networks, including “on radio and the Internet.” Id.
¶ 8. DIRECTV produces and Opposer’s networks air The Dan Patrick Show, a
“three-hour syndicated radio and television sports talk show” which is syndicated
“to individual radio station affiliates nationwide.” Id. ¶ 27. Opposer’s mark “signals
to consumers that the Root Sports Networks are a place where they can proudly
root for and support their home teams,” and “connotes the deep, historical roots that
those home teams have with their local communities.” Id. ¶ 14.
Applicant produces and distributes the “Music City Roots” radio program, based
in Nashville, which is available: (1) on terrestrial radio “in multiple cities across the
US;” (2) via “musiccityroots.com” on podcast and webcast; and (3) on satellite radio.
Walker Tr. at 25-27, 58-60 and Ex. 3. The program focuses on roots music, which
Mr. Walker described as a genre of music. Id. at 94, 109. Applicant has used
Opposition No. 91208501
5
ROOTS RADIO since approximately the summer of 20124 in connection with an
Internet radio station, accessible at “rootsradio.com,” which primarily plays
recordings from the “Music City Roots” program, and other “roots” music. Id. at 30,
68-69, 100-101, 105-106 and Ex. 10. According to the “rootsradio.com” website,
“Roots Radio is the streaming radio service of Music City Roots: Live from the
Loveless Café,” which features “[t]he finest roots and Americana artists from and
passing through Nashville.” Applicant’s NOR Ex. 3; see also, Walker Tr. Ex. 10
(Roots Radio’s library “represents an unparalleled cross-section of eclectic and
acclaimed roots music artists …”). Applicant is “currently launching some spinoff
shows,” including “Scenic City Roots” which is based in Chattanooga, and developed
a “Music City Roots: Live from the Loveless Café” television program which was
scheduled to air on multiple public television stations throughout the country.5 Id.
at 47-48, 53-54 and Exs. 6 and 7. In a business plan, Applicant analogizes Roots
Radio to ESPN, the sports network, because it desires to be the “authority” on roots
music. Id. at 86-88 and Ex. 11. As Mr. Walker testified, “So in that analogy, you
would find all things roots music and Americana music at Roots Radio.” Id. at 88.

4 In his affidavit, Mr. Walker testified that Applicant began using its ROOTS RADIO mark
on September 5, 2012, but in his discovery deposition, Mr. Walker testified that Applicant
began using the mark a few weeks prior to that. Compare Walker Tr. at 69 with Walker Aff.
¶ 9. In any event, there is no dispute that Opposer’s first use of ROOT SPORTS predates
Applicant’s first use of ROOTS RADIO.
5 Chattanooga is sometimes known as the “Scenic City” and Nashville is known as the
“Music City.” Walker Tr. at 106-07.
Opposition No. 91208501
6
Standing
Opposer introduced copies of its pleaded registrations printed from the
Office’s TSDR database which show their current status and title. Opposer’s NOR
No. 1; see also Crumb Aff. ¶¶ 10-12; Research in Motion Ltd. v. NBOR Corp., 92
USPQ2d 1926, 1928-29 (TTAB 2009) (printouts of registrations from one of the
Office’s electronic databases may be introduced by notice of reliance). Opposer’s
pleaded registrations establish its standing to oppose based on its claim of priority
and likelihood of confusion. Cunningham v. Laser Golf Corp., 222 F.3d 943, 945, 55
USPQ2d 1842, 1844 (Fed. Cir. 2000). And where, as here, Opposer has established
its “standing as to one ground, it has the right to assert any other ground as well,”
here that Applicant’s mark is generic or merely descriptive. Enbridge v. Excelerate
Energy LP, 92 USPQ2d 1537, 1543 n.10 (TTAB 2010).6
Evidence of Descriptiveness
Opposer’s claim of descriptiveness is based on a dictionary definition,
Applicant’s use of ROOTS and ROOTS RADIO, and media and third-party uses of
the proposed mark or its constituent terms. According to the Free Dictionary, when

6 In any event, Opposer has established its interest in using a variation of ROOTS in its
business. DeWalt, Inc. v. Magna Power Tool Corp., 129 USPQ 275, 280 (CCPA 1961); see
also Otto Roth & Co., Inc. v. Universal Corp., 209 USPQ 40, 44 (CCPA 1981) (“It is clear
that use of a term in a descriptive sense is sufficient to impart standing to oppose federal
registration of a descriptive ‘word, name, symbol, or device’ as a trademark.”); see also
Kellogg Co. v. General Mills Inc., 82 USPQ2d 1766, 1767 (TTAB 2007) (acknowledging that
a commercial interest in an allegedly descriptive term is sufficient to establish standing); 3
J. THOMAS MCCARTHY, McCarthy on Trademarks and Unfair Competition § 20:11 (4th ed.
2012) (“Standing to oppose is presumed when the mark sought to be registered is allegedly
descriptive of the goods and the opposer is one who has a sufficient interest in using the
descriptive term in his business.”).

Opposition No. 91208501
7
used in connection with music, “roots” means “going back to the origins of a style,
esp. in being genuine and unpretentious.” Walker Tr. Ex. 4.
Applicant’s uses of the proposed mark or the term ROOTS include the
following (emphasis added):
Applicant’s Use Citation
“Roots music is music that is born indigenous to a culture
and, you know, reflective of the history.”
Walker Tr. at 19
Roots Radio “play[s] roots music” Id. at 33
“So we decided that we wanted to be – we wanted to
represent that authority, because we’re here in the heart of
Music City, where the movement is centered of this roots –
this Roots/Americana thing.”
Id. at 87
In the ESPN analogy “you would find all things roots
music and Americana music at Roots Radio.”
Id. at 88
Music City Roots “will continue to grow into a national and
international brand that is synonymous with Roots and
Americana music and authenticity”
Walker Tr. Ex. 11
(Applicant’s business
plan) at p. 1
Music City Roots is a “respected International icon in the
underserved niche of Roots/Americana music”
Id.
“The New York Times called the emerging Nashville
Roots/Americana scene the ‘coolest musical scene in
America”
Id. at 2
“Over the last several years, pockets of very gifted artists
have bubbled up from New York to California and around
the world, all sharing the same love for the integrity and
honesty of the various forms of roots music that were
birthed from American culture.”
Id.
Market segments for Music City Roots include “Americana
and Roots music fans”
Id. at 4
“Music City Roots reaches a younger fan by featuring:
Americana, roots, indie, folk, blues, gospel, bluegrass, rock
and roll as well as country music.”
Id. at 8
“Music City Roots and the expansion brand of Roots Radio,
is positioned to become the ‘ESPN’ of Roots/Americana
music … the worldwide authority and point of discovery for
American roots music and artists.”
Id. at 10
Roots Radio features “exclusive live show content as well as
recorded tracks by popular roots artists.”
Id.
“Music City Roots is approaching three years on the air and Walker Tr. Ex. 10
Opposition No. 91208501
8
Applicant’s Use Citation
over more than 120 episodes we’ve accumulated an
incredible archive of performances by the best roots artists
in the world”
(Applicant’s
September 5, 2012
press release)
“The library represents an unparalleled cross-section of
eclectic and acclaimed roots music artists”
Id.
“Roots Radio is the streaming radio service of Music City
Roots: Live from the Loveless Café, featuring round the
clock highlight performances from the archives of Music
City Roots. The finest roots and Americana artists from
around and passing through Nashville.”
Applicant’s NOR Ex.
3
“I understand ‘roots music’ to include the folk, blues and
country genres. These are the styles of music that Music
City Roots provides under its MUSIC CITY ROOTS mark
and its ROOTS RADIO mark.”
Walker Aff. ¶ 8

Media uses of the proposed mark or the term ROOTS include the following
(emphasis added):
Media Use Citation
“The first episode, ‘When First Unto This Country,’ traces
the emergence of roots music in America from its
European and African origins through its maturation into
American musical genres such as spirituals, blues, country
and gospel.”

“American roots music – often made up loosely of the
genres of blues, folk, gospel and country – is celebrated each
year in the American Roots Music Festival”
Opposer’s NOR No. 4
Ex. 102 (“In search of
his roots,”
STATESMAN
JOURNAL,
September 16, 2005)
“WheatonArts, in cooperation with the New Jersey Council
for the Humanities, will explore this and other aspects of
America’s roots music as it hosts the local showing of New
Harmonies: Celebrating American Roots Music, a
Smithsonian Institution traveling exhibition.”
Id. Ex. 103 (THE
NEWS OF
CUMBERLAND
COUNTY, Nov. 1,
2011)
“No band better illustrates the rising popularity of
American roots music among both old and young
audiences more than Nashville’s Old Crow Medicine Show.”
Id. Ex. 104 (“Old
Crow’s a ‘pusher’:
Get hooked on
Americana roots
music,” THE CITY
PAPER (Nashville,
Tennessee), Oct. 9,
2008)
Opposition No. 91208501
9
Media Use Citation
“Devote today to roots music with film and music events
around the area.”
Id. Ex. 105 (“Roots
music is in the
spotlight today,”
STATESMAN
JOURNAL, Oct. 9,
2004)
“Even among true believers such as ‘O Brother’ directors
Joel and Ethan Coen, who describe their Depression-era
comedy as a valentine to American roots music, there is
skepticism about how much the soundtrack’s success says
about the music’s commercial viability.”

“Emmylou Harris is a tireless champion of roots music …”
Id. Ex. 106 (“Is There
Life After Radio for
American Roots
Music?,” THE
BOSTON GLOBE,
June 24, 2001)
“Spurred by the success of the ‘O Brother, Where Art Thou?’
soundtrack, ‘roots’ music is currently experiencing its
highest level of popularity in decades.”
Id. Ex. 108 (“Picking
up on roots music,”
SPRINGFIELD
NEWS-LEADER,
Jan. 31, 2002)
“American roots music isn’t restricted to the Southern
gospel of Mahalia Jackson and the down-home country of
Roy Acuff.”
Id. Ex. 109
(“Traveling
Smithsonian exhibit:
The wings of roots
music,” THE SALT
LAKE TRIBUNE,
April 8, 2010)
“It was roots music night in New York, with all the
seeming incongruities such a phrase might suggest. Though
more commonly associated with indie-rock upstarts, jazz
improvisers and hip-hop survivors, New York has lately
become remarkably hospitable to musicians upholding more
rustic ideals.”
Id. Ex. 110 (“The
Sound Is Rural, the
Setting Urban,” THE
NEW YORK TIMES,
Feb. 29, 2008)
“Rick Cornell’s ‘Old roots, new branches’ examines roots
artists in North Carolina …”
Id. Ex. 111 (“Old
Roots, New
Branches,” THE
INDEPENDENT
WEEKLY, Dec. 19,
2007)
“There are three major panels that comprise the Gathering:
the opening panel on survival, the ‘Roots Music Tradition
Bearers – Post Hurricane Conversation’ and the ‘Roots
Music Preservation and Presentation’ discussion, which
gathers folklorists and preservationists from throughout the
Gulf South and mid-South region.”
Id. Ex. 113 (“Roots
Revival,” GAMBIT
WEEKLY, Aug. 22,
2006)
Opposition No. 91208501
10
Media Use Citation
“Roots – also known as American folk music – is a broad
name that encompasses music that is native to the U.S. The
genre of roots is so large that it can be divided into many
subgenres, including blues country, acoustic, bluegrass,
gospel and many more.”
Id. Ex. 114 (“We are
always trying to raise
the bar?,” THE SAN
DIEGO UNION-
TRIBUNE, April 22,
2010)
“The Roots Music Festival at Red Square on Friday and
Saturday nights is an act love (sic) – love of music.”

“’As far as ‘roots’ goes, another meaning of ‘root’ would be
the source, and in this case, I think the source is the blues,
says Dunham. ‘Some of us add a twang to it and call it
country blues. Some of us add a folk element. Some of us
play with the rhythm and the tempo until it becomes
bluegrass or rockabilly.’”
Id. Ex. 115 (“Lucky
Number. Roots
Music Festival
gives you 7 bands for
$7 this weekend,”
THE TIMES
UNION, Oct. 11,
2007)
“The Chicago History Museum’s new exhibit ‘Chicago Roots
Music’ is a wang, dang doodle of inspiration.”
Id. Ex. 116 (“Far-
reaching ‘Roots’:
History Museum
exhibit traces places
of origin for Chicago
roots music,”
CHICAGO SUN
TIMES, Nov. 10,
2006)
“The soundtrack of roots music continues to captivate new
listeners who recognize in its stirring vocals something
wonderfully distinct from today’s fast-food pop music scene,
something close to eternal as opposed to disposable.”
Id. Ex. 118 (“Critic’s
Notebook: Digging
the roots of
American music,”
THE ATLANTA
JOURNAL-
CONSTITUTION,
Nov. 12, 2001)
“American roots music is one of those terms that many
people have a hard time getting their minds around. It’s a
little bit country, a little bit gospel, a little bit rock ‘n’ roll
and a little bit more. An industry expert calls it ‘the binding
of America’s national songbook.’”
Id. Ex. 119 (“Roots
music at home on
the river. A
Converted Davenport
department store
preserves America’s
indigenous tunes,”
THE KANSAS CITY
STAR, Nov. 21, 2004)
“The critical and commercial success of recent roots-
influenced albums from Lucinda Williams, Bob Dylan and
Id. Ex. 122 (“Music
Takes Root,”
Opposition No. 91208501
11
Media Use Citation
Ryan Adams confirmed the profound influence such music
continues to have.”

“… not to mention roots-radio programs on WUSB-FM
(90.1) – particularly ‘Sunday Street,’ hosted by Charlie
Backfish -- Long Island in particular has become a hotbed
for roots music”
NEWSDAY, Jan. 4,
2002)
“How do you characterize an artist like Johnny Cash, who
played music with elements of country, folk, rockabilly,
gospel, and blues? Here’s one way: a roots musician.
‘Roots music,’ sometimes also called ‘Americana’ is a catch-
all phrase that encompasses the broad spectrum of
American music. Blues, bluegrass, Celtic, country, folk,
cowboy songs, gospel, rockabilly, vintage R&B – all could be
considered roots music.”
Id. Ex. 123 (“Cash
Country, COURIER
NEWS, Nov. 13,
2005)
“That’s exactly what happened with the roots-music
explosion – one trend that finds places such as Colorado
Springs, Oklahoma City and Pikesville, Ky. on the cutting
edge while the coasts lag behind.”
Id. Ex. 124 (“Roots-
music revival puts
American heartland
on the cutting edge,”
THE GAZETTE,
March 26, 2002)
“If you like your blues deep, the barbecue smoked and your
roots music heavy, then the Second Annual New England
Bloody Roots Music Festival on Saturday is the event for
you.”

“’Roots music is not the gloss and polish that we’re at
now,’” Keyes said. “’It gets down to the nitty-gritty of it.
There is no lipstick or light shows. It’s sweaty bands playing
really good music ….”
Id. Ex. 127 (“Music,
down and dirty,”
WORCESTER
TELEGRAM &
GAZETTE, Oct. 4,
2012)
From review of book American Roots Music:

“The primary forms of roots music include blues, country,
western swing, black gospel, rock, zydeco, Cajun, Tejano and
Native American.”
Id. Ex. 128
(“Review/Books: God
Bless Americana,”
THE WALL STREET
JOURNAL, Nov. 2,
2001)
“It’s country, it’s folk, it’s rockabilly – it’s alt-country,
Western swing, roots rock, bluegrass, Americana, and more.
So call it roots music. It’s a big category.”
Id. Ex. 131 (“Honky –
Tonks,”
WASHINGTONIAN,
Feb. 2003)

Opposition No. 91208501
12
Opposer further relies on portions of two books about roots music: (1)
Romancing the Folk: Public Memory & American Roots Music, by Benjamin
Filene (University of North Carolina Press 2000), id. Ex. 133; and (2) American
Roots Music, edited by Robert Santelli, Holly George-Warren and Jim Brown
(Harry N. Abrams, Inc. 2001), which is based on the PBS Television series; the final
chapter of the book is entitled “Roots Music Begats Rock & Roll,” id., Ex. 134.
Finally, Opposer relies on the following third-party uses of the term “roots” in
connection with music (emphasis added):
Third-Party Use Citation
“90.9 fm WDCB – Folk/Roots Programming”

“WDCB plays more folk and acoustic roots music than any
other station in Northern Illinois, including bluegrass,
Americana, world (Celtic folk and reggae), blues, Cajun and
zydeco”
Id. Ex. 135 (printout
from “wdcb.org”)
“Alabama Roots Music Society” Id. Ex. 136 (printout
from
“alabamarootsmusi
c.com”)
“The Trail Band headlines the 2009 American Roots
Music Festival!”
Id. Ex. 137 (printout
from
“americanrootsmu
sicfestival.org”)
“The artistic validity of a wide range of American roots
styles – including blues, gospel, folk, early country music,
bluegrass, old-time, Cajun, western swing, polka, Tex-Mex,
and others – is beyond dispute.”

“Among its many projects, the American Roots Music
Program produces concerts, hosts visiting artists, designs
and implements curriculum ….”
Id. Ex. 138 (printout
from “berklee.edu”)
“What is ‘American Roots Radio’? The objective of
‘American Roots Radio’ is to present a comprehensive
and varied overview of American Roots music
encompassing all genres.”

Id. Ex. 140 (printout
from
“berniejtaupin.com”)
Opposition No. 91208501
13
Third-Party Use Citation
“Airing on Sirius/XM Channel 30 every Saturday night at
6pm Eastern …’
“The 56th Grammy Awards Best Regional Roots Music
Album”
Id. Ex. 141 (printout
from “cbs.com”)
“Colorado Roots Music Camp … Join us June 1-7, 2014 for
a week of bluegrass, folk, blues, swing, jazz, Irish, flatpicked
and fingerstyle guitar, mandolin, banjo, fiddle, bass,
singing, learning and fun!”
Id. Ex. 143 (printout
from
“coloradorootsmus
ic.com”)
“But the presence of the Shakes and the folk-rock
Lumineers in the Best New Artist category … suggests that
the lines between roots and rock are continuing to blur …”
Id. Ex. 148 (“The
Rise of Roots
Music,” Lynne
Margolis, printout
from “grammy.com”)
“Eventually, she graduated to the banjo, began writing her
own songs – folk gems that honor America’s ever-evolving
roots music tradition …”
Id. Ex. 149 (“New
Orleans’ Hurray for
the Riff Raff Blaze
Trails, Tangle Up
Roots Music,”
printout from
“spin.com”)
“Hi, we’re Frank Scott and Nancy Scott-Noennig, the owners
of Roots & Rhythm, the internet’s best source of on-line
roots music.”
Id. Ex. 153 (printout
from
“rootsandrhythm.com
”)
“Welcome to the Roots Music Association” Id. Ex. 154 (printout
from
“rootsmusicassocia
tion.com”)
“Roots Radio: From Kentucky bluegrass to scratchy 1930s
gospel recordings to modern-day ballads, Roots Radio
plays a variety of traditional and experimental American
roots music.”
Id. Ex. 156 (printout
from “bsrlive.com”)
“RME The Roots Music Express Show”

“The Roots Music Express Radio Blog”

“The most radio air-played roots albums on radio each
week as tabulated by the Roots Music Report airplay
database and published radio airplay charts.”

“The Roots Genre encompasses Blues, Folk, Jazz, Tru
Country, Bluegrass, Roots Rock and Roots/Americana
Country music formats.”
Id. Ex. 157 (printout
from
“rootsmusicexpres
s.com”)
Opposition No. 91208501
14
Third-Party Use Citation
“The Roots Music Project [WEMU 89.1] … The show
focuses on the creases and intersections between genres,
styles and influences in music and features everything from
folk to country, from blues to roots rock, from rockabilly to
bluegrass and just about everything in between.”

Id. Ex. 159 (printout
from “wemu.org”)
“No Depression The Roots Music Authority est. 1995” Id. Ex. 160 (printout
from
“nodepression.com”)

Standard for Descriptiveness
A mark is deemed to be merely descriptive, within the meaning of Section
2(e)(1), if it “immediately conveys knowledge of a quality, feature, function, or
characteristic of the goods or services with which it is used.” In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (quoting In
re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987)); see In re Abcor Dev.
Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). A mark need not
immediately convey an idea of each and every specific feature of the services in
order to be considered merely descriptive; rather, it is sufficient that the mark
describes one significant attribute, function or property of the services. In re
Chamber of Commerce of the United States of America, 675 F.3d 1297, 102 USPQ2d
1217, 1219 (Fed. Cir. 2012); In re H.U.D.D.L.E., 216 USPQ 358, 359 (TTAB 1982);
In re MBAssociates, 180 USPQ 338, 339 (TTAB 1973). Whether a mark is merely
descriptive is determined not in the abstract, but in relation to the services for
which registration is sought, the context in which it is being used on or in
connection with the services, and the possible significance that the mark would
have to the average purchaser of the services because of the manner of its use. In re
Opposition No. 91208501
15
Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). It is settled that “[t]he
question is not whether someone presented with only the mark could guess what
the goods or services are. Rather, the question is whether someone who knows what
the goods or services are will understand the mark to convey information about
them.” In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).
When two or more merely descriptive terms are combined, the determination
of whether the composite mark also has a merely descriptive significance turns on
whether the combination of terms evokes a new and unique commercial impression.
If each component retains its merely descriptive significance in relation to the
services, the combination results in a composite that is itself merely descriptive.
See, e.g., In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372
(Fed. Cir. 2004) (PATENTS.COM merely descriptive of computer software for
managing a database of records that could include patents, and for tracking the
status of the records by means of the Internet); In re Petroglyph Games, Inc., 91
USPQ2d 1332, 1341 (TTAB 2009) (BATTLECAM merely descriptive for computer
game software); In re Carlson, 91 USPQ2d 1198, 1200 (TTAB 2009)
(URBANHOUZING merely descriptive of real estate brokerage, real estate
consultation and real estate listing services); In re Tower Tech, 64 USPQ2d at 1314
(SMARTTOWER merely descriptive of commercial and industrial cooling towers);
In re Sun Microsystems Inc., 59 USPQ2d 1084, 1087 (TTAB 2001) (AGENTBEANS
merely descriptive of computer programs for use in developing and deploying
application programs); In re Putman Publishing Co., 39 USPQ2d 2021, 2022 (TTAB
Opposition No. 91208501
16
1996) (FOOD & BEVERAGE ONLINE merely descriptive of news and information
services in the food processing industry).
Analysis
Here the evidence leaves no doubt. “Roots” music, as Mr. Walker testified,
and the dictionary evidence of record confirms, is a “genre” or type of music. Walker
Tr. at 109 and Ex. 4; Walker Aff. ¶ 8. It is consistently and generally characterized,
by Applicant, the media and third-parties, as a “big,” “broad” and “large” category of
“genuine,” “authentic,” “indigenous” and primarily American music; it is often
referred to as “Americana.” Walker Tr. at 19, 87 and Ex. 11; Opposer’s NOR No. 4
Exs. 109, 114, 115, 119, 123, 127, 131, 138, 140, 156, 157, 159. It is more specifically
(and consistently) characterized as comprising a variety, and often an amalgam, of
types of American music and styles, including folk, blues, gospel, bluegrass, rock,
country and rockabilly. Walker Tr. Ex. 11 at 8; Opposer’s NOR No. 4 Exs. 102, 114,
115, 119, 123, 128, 131, 135, 138, 157, 159; Walker Aff. ¶ 8. In addition to
Applicant’s roots music-focused Internet radio station, there are roots music books,
exhibitions, associations, festivals, museums, films, awards, panel discussions,
camps and websites. Opposer’s NOR No. 4 Exs. 102, 103, 105, 106, 113, 115, 116,
119, 127, 128, 136, 137, 138, 141, 143, 153, 154.
More importantly for purposes of establishing that Applicant’s proposed
composite mark ROOTS RADIO is itself merely descriptive,7 there are also, in
addition to Applicant’s Internet radio station, other “roots radio” stations and

7 Applicant does not dispute that the disclaimed word “radio” is merely descriptive of its
“on-going radio programming” services.
Opposition No. 91208501
17
programs. Indeed, a Newsday article referred to “roots-radio programs on WUSB-
FM (90.1),” WDCB (90.9 fm) promotes its “Folk/Roots Programming” and claims to
play more “acoustic roots music than any other station in Northern Illinois,”
Sirius/XM satellite radio channel 30 airs “American Roots Radio,” BSR Live
features its own “Roots Radio,” The Roots Music Express Show features the roots
music most often played on radio and WEMU (89.1 fm) features a roots music
program. Id. Ex. 122, 135, 140, 156, 157, 159. These descriptive uses and the other
evidence of record make clear that consumers of “on-going radio programming in the
field of music” will immediately understand the composite term “roots radio” to
refer to a radio station or program featuring roots music.8 In other words, here, “the
mark as a whole, i.e., the combination of the individual parts,” in this case the
words “roots” and “radio,” does not convey “any distinctive source-identifying
impression contrary to the descriptiveness of the individual parts.” In re Oppedahl
& Larson, 71 USPQ2d at 1372. Rather, from “the perspective of a prospective
purchaser or user” of radio programming in the field of music, “because … the
combination of the terms does not result in a composite that alters the meaning of

8 Applicant argues that consumers “are likely to view ROOTS in ROOTS RADIO the same
way they view ROOTS in MUSIC CITY ROOTS, that is to say, as the foundation or roots of
the musical tree that gives MUSIC CITY its name.” Applicant’s Brief at 9-10. We are not
persuaded. Applicant’s identification of services is not limited to those familiar with MUSIC
CITY ROOTS. Rather, it covers “radio programming in the field of music” generally, which
includes, as Applicant admits, the “genre” of roots music. In any event, the evidence of
record establishes that even if “roots radio” conveyed to certain consumers the “roots of the
musical tree,” that would be entirely consistent with a finding that “roots” is merely
descriptive of a specific type of music played on radio. Walker Tr. at 19 (“Roots music is
music that is born indigenous to a culture and, you know, reflective of the history.”);
Opposer’s NOR No. 4 Exs. 102 (an episode “traces the emergence of roots music in America
from its European and African origins through its maturation into American musical
genres …”); Opposer’s NOR No. 115 (“another meaning of ‘root’ would be the source …”).
Opposition No. 91208501
18
either of the elements,” and does not create a double entendre or incongruity,
“refusal on the ground of descriptiveness is appropriate.” In re Petroglyph Games,
at 1341.
Conclusion
The record establishes not only that “roots radio” merely and immediately
describes “on-going radio programming in the field of music,” because “roots” is a
type or “genre” of music, but also that Applicant’s competitors have a need to (and
do) use “roots radio” for Applicant’s services and related services. See In re Abcor
Dev. Corp., 200 USPQ at 217 (“The major reasons for not protecting [merely
descriptive] marks are … to maintain freedom of the public to use the language
involved, thus avoiding the possibility of harassing infringement suits by the
registrant against others who use the mark when advertising or describing their
own products.”).

Decision: The opposition is sustained.9

9 Because we sustain the opposition on the ground of mere descriptiveness, we need not
consider the additional ground of likelihood of confusion. Nor do we consider genericness,
which is “the ultimate in descriptiveness.” H. Marvin Ginn Corp. v. Int’l Ass’n of Fire
Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986). Because descriptiveness is
itself sufficient to bar registration of a mark on the Principal Register, Trademark Act
§ 2(e)(1), it is unnecessary for Opposer to prove or for us to consider the issue of
genericness, unless registration is sought under Trademark Act § 2(f) or on the
Supplemental Register.