MixRadio Limited

Trademark Trial and Appeal Board

Nov 6, 2015

No. 79137054 (T.T.A.B. Nov. 6, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: November 6, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re MixRadio Limited
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Serial No. 79137054
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John Peter Halski and Grace Han Stanton of Perkins Coie LLP,
for MixRadio Limited.
Kristin Carlson, Trademark Examining Attorney, Law Office 105,
Susan Hayash, Managing Attorney.
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Before Bucher, Wellington and Hightower,
Administrative Trademark Judges.

Opinion by Bucher, Administrative Trademark Judge:
MixRadio Limited (“Applicant”) seeks registration on the Principal Register of
the special-form composite mark as follows:

for goods and services described as follows:
“computer software for providing access to pre-recorded music
and video for download to smart phones, mobile phones, tablets
and computers via the Internet; computer software for use in the
delivery, distribution and transmission of digital music and
entertainment-related audio, video, text and multimedia content;
Serial No. 79137054
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computer software for enabling transmission, storage, sharing,
collection, editing, organizing and modifying audio, video,
messages, images and other data; computer software for creating
searchable databases of information and data for peer-to-peer
social networking databases; computer programs for use in
streaming or downloading music, film, TV-programs, audio books
and games” in International Class 9;
“online retail store services featuring music for download” in
International Class 35;
“electronic transmission and streaming of digital media content
for others via global and local computer networks” in
International Class 38; and
“entertainment services, namely, providing non-downloadable
prerecorded music on-line via a music subscription service” in
International Class 41.1
The Trademark Examining Attorney required Applicant to disclaim the
exclusive right to use the term “Mix Radio” apart from the mark as shown, on the
ground that this term is merely descriptive of Applicant’s goods and merely
descriptive of a feature of Applicant’s services. Applicant declined to disclaim the
term “Mix Radio.” The Trademark Examining Attorney made her requirement final
and, on the basis of Applicant’s failure to disclaim the term, refused registration of
the mark. See 15 U.S.C. §§ 1052(e)(1) and 1056(a).
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Trademark Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
Merely descriptive terms are unregistrable, under Trademark Act Section
2(e)(1), 15 U.S.C. § 1052(e)(1), and, therefore, are subject to disclaimer if the mark

1 Application Serial No. 79137054 was filed on August 21, 2013, based upon a request for
extension of protection filed under Section 66(a) of the Trademark Act, 15 U.S.C. § 1141(f),
on the basis of International Reg. No. 1177894. The mark consists of the wording
“MixRadio” to the right of a circle within which appears two parallel vertical lines above a
curved line, forming eyes and a smile.
Serial No. 79137054
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is otherwise registrable. Thus, the Trademark Examining Attorney may require
that Applicant disclaim an unregistrable component of a composite mark otherwise
registrable. Trademark Act Section 6(a), 15 U.S.C. § 1056(a). Failure to comply with
a disclaimer requirement is grounds for refusal of registration. See In re Omaha
National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Richardson
Ink Co., 511 F.2d 559, 185 USPQ 46 (CCPA 1975); In re Ginc UK Ltd., 90 USPQ2d
1472 (TTAB 2007).
A term must be disclaimed apart from the mark as shown if it is deemed to be
merely descriptive of the subject goods or services. A term is deemed to be merely
descriptive within the meaning of Section 2(e)(1) if it forthwith conveys an
immediate idea of an ingredient, quality, characteristic, feature, function, purpose
or use of the goods or services. See, e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009 (Fed. Cir. 1987); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215,
217-18 (CCPA 1978).
Applicant argues that the Trademark Examining Attorney has failed to make a
prima facie showing of descriptiveness; that the combination of the words “Mix” and
“Radio” into a compound term (“MixRadio”) results in a suggestive, if not arbitrary,
term; and that the applied-for, composite mark, in its entirety, is unitary and hence
its elements are inseparable.
In support of her position herein, the Trademark Examining Attorney has
submitted a variety of evidence in support of mere descriptiveness, and therefore,
her disclaimer requirement. We turn first to usage by Applicant and its
predecessors-in-interest:
Serial No. 79137054
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2

2 www.nokia.com/us-en/apps/mixradio, as accessed by the Trademark Examining Attorney
on December 10, 2013; see also www.microsoft.com/en-us/mobile/apps/mixradio, as accessed
by the Trademark Examining Attorney on January 20, 2015.
"MixRadio: a music app that personalizes
mixes to suit your tastes."
"Play Me is where you’ll find a fresh new
mix of music, customized to your own music
taste."
"Personalize your Play Me mix even more by
tapping the thumbs up and thumbs down
icons."
"MixRadio is filled with mixes put together
by our team of global music experts ... "
"Whether you’re looking for a new
soundtrack for your workout or for the
perfect party mix, our mixes have you
covered."
"When you’ve discovered some mixes you
love, let those closest to you know ... . Your
friends will be able to listen to your favorite
mixes."
"For just a small monthly fee, you get
premium benefits like unlimited track-
skipping, unlimited offline mixes, high
quality audio over Wi-Fi and more."
Serial No. 79137054
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3

The evidence indicates that Nokia “rebranded” its service, dubbing it “Mix
Radio” to reflect the app’s “main feature,” namely a personalized stream of music
presented in a radio format. The music software permits the user to access music,
music downloads, music transmission and music streaming, featuring ready-made
mixes as well as personalized mixes of songs. Other online entries show similar uses
by Applicant and its predecessors, Nokia Corporation and Microsoft Mobile OY:

3 http://www.engadget.com/2013/11/20/nokia-rebrands-music-service-as-mix-radio/, as
accessed by the Trademark Examining Attorney on December 10, 2013.
Serial No. 79137054
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4
5

4 www.windowsphone.com/en-us/store/app/nokia-mixradio/, as accessed by the Trademark
Examining Attorney on December 10, 2013.
5 http://whymusicmatters.com/find-music/, as accessed by the Trademark Examining
Attorney on December 10, 2013.
Serial No. 79137054
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The Trademark Examining Attorney also provided for the record a variety of
third-party uses of the term “Mix Radio”:
6
7
8

6 http://www.a-1mix.com/, as accessed by the Trademark Examining Attorney on June 30,
2014; see also http://www.a-1mix.com/about.html as accessed on January 20, 2015.
7 http://www.clubmixradio.net/, as accessed by the Trademark Examining Attorney on
January 20, 2015.
8 http://tunein.com/radio/Kool-Mix-Radio-s67026/, as accessed by the Trademark Examining
Attorney on January 20, 2015.
Serial No. 79137054
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9
10

9 https://www.kickstarter.com/projects/austinwiard7/my-mix-radio, as accessed by the
Trademark Examining Attorney on June 30, 2014.
10 http://thegospelmixcd.com/gospelmixradio/, as accessed by the Trademark Examining
Attorney on June 30, 2014.
Serial No. 79137054
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11
12
13

11 http://www.brooklynmix.com/music.html, as accessed by the Trademark Examining
Attorney on January 20, 2015.
12 http://www.ksgm.com/, as accessed by the Trademark Examining Attorney on January
20, 2015.
13 http://www.latinbayarea.com/article/latino-mix-radio-station-whats-really-going-on, as
accessed by the Trademark Examining Attorney on June 30, 2014.
Serial No. 79137054
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14
15

14 http://www.wpkn.org/shows/wilfredo-soto-2/, as accessed by the Trademark Examining
Attorney on January 20, 2015.
15 http://www.live365.com/stations/konpamaniax, as accessed by the Trademark Examining
Attorney on January 20, 2015.
Serial No. 79137054
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16
17
Finally, the Trademark Examining Attorney placed into the record from the
Lexis-Nexis database several entries using the term “mix radio” in the context of
online music presentations:
HEADLINE: Local live music entertainment calendar jam-packed this week
… Cary Judd delivers a poppy punch that has at least three tracks worthy
[of] mix radio rotation … 18
HEADLINE: Country music gets a new spice with Dee Jay Silver
Silver had a productive 2013 and looks as if he will carry that over into
2014. His country mix radio show is now being syndicated and can
now be heard outside of Nashville. 19

16 http://rainbowmixradio.com/index.php, as accessed by the Trademark Examining
Attorney on January 20, 2015.
17 http://absolutemixradio.com/player/, as accessed by the Trademark Examining Attorney
on January 20, 2015.
18 Idaho State Journal, July 8, 2010, at A-9.
19 The Valencia Source, January 25, 2014, at 1.
Serial No. 79137054
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HEADLINE: Henry Rollins Joins “Sons of Anarchy”
[Rollins] currently hosts his own music mix radio show on KCRW-FM.
Rollins’ film appearances include Bad Boys 2 with Will Smith and
Martin Lawrence and director David Lynch’s Lost Highway. 20
We find that the above evidence of record demonstrates that the Trademark
Examining Attorney has made a prima facie showing of mere descriptiveness. The
various items of evidence cited above, including Applicant’s (and its predecessors’)
earlier descriptions of its goods and services, confirm that the term “Mix Radio”
conveys an immediate idea of Applicant’s Class 9 software for use in “providing
access to pre-recorded music” and “streaming or downloading music,” namely a
personalized stream of music presented in a radio-like format. Similarly, as to the
Class 35 retail store services featuring “music for download,” the Class 39 services
of “transmission and streaming of digital media content,” and the Class 41 services
of “providing non-downloadable prerecorded music online,” the readily understood
idea conveyed by the term “Mix Radio” is that these services permit the user to
access music, music downloads, music transmission and music streaming, featuring
ready-made mixes of music presented in a radio-like format, as well as personalized
mixes of songs in a similar format. This finding is supported by the usage by third-
parties of the term “Mix Radio” in a merely descriptive manner in connection with
apps and radio services featuring a variety of particular mixes of music.
As argued by the Trademark Examining Attorney, the individual components
(“Mix” and “Radio”) retain their descriptive meaning in relation to the goods and
services when combined. Furthermore, Applicant has not articulated a new, non-
descriptive meaning created by this combination of two descriptive words. Hence, the

20 Akron Beacon Journal, March 16, 2009.
Serial No. 79137054
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combination results in a composite term that is itself descriptive and not registrable.
In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1341 (TTAB 2009) (holding
BATTLECAM merely descriptive of computer game software with a feature that
involve battles and provides the player with the option to utilize various views of the
battlefield); In re Cox Enters., 82 USPQ2d 1040, 1043 (TTAB 2007) (holding
THEATL merely descriptive of publications featuring news and information about
Atlanta where THEATL was the equivalent of the nickname THE ATL for the city of
Atlanta); In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB 2002) (holding
SMARTTOWER merely descriptive of highly automated cooling towers); In re Sun
Microsystems, Inc., 59 USPQ2d 1084, 1085 (TTAB 2001) (holding AGENTBEANS
merely descriptive of computer software for use in developing and deploying
application programs on a global computer network). In each of these cases, as in the
case before us, the absence of a space between the compound terms did not take
away from the descriptiveness of each term.
Finally, the literal component of this composite mark consists of the descriptive words
“MixRadio” to the right of a circle that can be interpreted as a smiley face (or upside down
headphones). In either case, we find this design component to be a distinct and separable
element of this combined mark, providing Applicant with some latitude in selecting the
mark it wants to register. This finding is really a corollary to a finding that Applicant
could have chosen to apply to register either the design or the literal (albeit merely
descriptive) element without concern that such a drawing would result in a
“mutilation” of this composite mark as actually used in commerce.
Serial No. 79137054
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Decision: The term “Mix Radio” is merely descriptive of Applicant’s goods in
International Class 9 and its services in International Classes 35, 38 and 41. Hence,
the Office’s refusal to register Applicant’s applied-for mark is hereby affirmed and
registration to Applicant is refused. However, this decision will be set aside if,
within thirty (30) days of the mailing date of this decision, Applicant submits to the
Board the required disclaimer of the term “Mix Radio.” See Trademark Rule
2.142(g), 37 U.S.C. § 2.142(g); and TBMP § 1218 (2015). A proper disclaimer should
read as follows:
No claim is made to the exclusive right to use the term
“Mix Radio” apart from the mark as shown.