Universal Music Publishing MGB Limited

Trademark Trial and Appeal Board

Apr 17, 2019

EX (T.T.A.B. Apr. 17, 2019)

This Opinion is not a
Precedent of the TTAB

Mailed: April 17, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Universal Music Publishing MGB Limited
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Serial No. 86454380
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Brent S. LaBarge and Morgan A. Champion of Universal Music Group,
for Universal Music Publishing MGB Limited.
Shaila E. Lewis, Trademark Examining Attorney, Law Office 114,
Laurie Kaufman, Managing Attorney.
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Before Zervas, Mermelstein, and Shaw,
Administrative Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:
Universal Music Publishing MGB Limited (“Applicant”) seeks registration on the
Principal Register of the mark, , for “music publishing services; music
composition services; music production services; production music library services,
none of the foregoing marketed through infomercials,” in International Class 41.1

1 Application Serial No. 86454380, filed on November 14, 2014, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act and under Section 44(d) of the Trademark Act, 15 U.S.C. §§ 1051(b) and
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The description of the mark reads: “The mark consists of the words ‘AS HEARD’ in
capital letters over the words ‘ON TV’ in capital letters with the word ‘ON’ inside of
the ‘on’ symbol and the letter ‘T’ in bold.” Color is not claimed as a feature of the mark.
The Trademark Examining Attorney refused registration of Applicant’s mark
pursuant to Section 6(a), 15 U.S.C. § 1056(a), based on Applicant’s failure to comply
with a requirement to disclaim AS HEARD ON TV because it is merely descriptive of
Applicant’s services within the meaning of Trademark Act Section 2(e)(1) and thus
an unregistrable component of the mark. 15 U.S.C. § 1052(e)(1).
When the refusal was made final, Applicant appealed and requested
reconsideration. The request for reconsideration was denied and the appeal resumed.
The case is fully briefed. We affirm the requirement for a disclaimer.
Section 6(a) of the Trademark Act provides that “The Director may require the
applicant to disclaim an unregistrable component of a mark otherwise registrable.”
15 U.S.C. § 1056(a). See In re White Jasmine LLC, 106 USPQ2d 1385, 1394 (TTAB
2013) (citing In re Franklin Press, Inc., 597 F.2d 270, 201 USPQ 662, 665 (CCPA
1979)). If the Applicant does not comply with the disclaimer requirement, the
Examining Attorney may refuse registration of the entire mark. In re La. Fish Fry
Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262 (Fed. Cir. 2015).
Merely descriptive terms are subject to disclaimer if the mark in which they
appear is otherwise registrable. See, e.g., In re Omaha Nat’l Corp., 819 F.2d 1117, 2

1126(d), with a claim of priority based on European Community Trademark Application No.
013458245, filed November 13, 2014; amended to also seek registration under Section 44(e),
15 U.S.C. § 1126(e), based on European Community Trademark Registration No. 013458245
registered July 28, 2015.
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USPQ2d 1859 (Fed. Cir. 1987); In re RiseSmart, Inc., 104 USPQ2d 1931, 1934 (TTAB
2012). A term is considered to be merely descriptive under Section 2(e)(1) of the
Trademark Act if it immediately conveys knowledge of a quality, feature, function, or
characteristic of the goods with which it is used. See In re Chamber of Commerce of
the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); Mini Melts, Inc. v.
Reckitt Benckiser LLC, 118 USPQ2d 1464, 1478 (TTAB 2016).
Applicant publishes music that is used by content creators who need music for
their video or audio productions.2 Applicant offers its services, in part, via a music
library from which the content creators choose the appropriate selections. The music
is licensed to the content creators. Applicant’s role is described as follows:
Music publishers are essentially songwriter promoters.
They work to pair talented songwriters with artists which
results in exposure to the public and income for the
songwriter. Music publishers “pitch” songs to record labels,
movie and television producers and others who use music,
then license the right to use the song and collect fees for
the usage. Those fees are then split with the songwriter.3
A page from Applicant’s website, duplicated below, shows use of the mark in
connection with the online music library or catalog. The mark is used as the name of
a “Label” or subset of different musical genres including, for example, “Killer Tracks,”
“Atmosphere,” “Classical,” and “Greatest Hits.” Next to the mark is the wording
“Proven TV friendly music covering all production themes.”

2 Applicant’s Br., p. 6, 8 TTABVUE 7.
3 Response to Office Action of September 8, 2015, p. 11.
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4
The Examining Attorney argues that the wording AS HEARD ON TV immediately
conveys information about Applicant’s services:
When used in connection with “music publishing services,
music composition services, music production services, and
production music library services,” the wording “AS
HEARD ON TV,” . . . immediately conveys to the consumer
that applicant’s music publishing catalog features music
heard on television or music created for television, such as
jingles and/or source music. It also indicates that applicant
composes, produces, and/or stores, as part of its library

4 Applicant’s Response to Office Action of July 13, 2016, p. 7.
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services, music heard on television or created for
television.5
In support of the disclaimer requirement, the Examining Attorney made of record
third-party registrations for marks comprising similar wording which has been
disclaimed. The following examples are representative:6
• Registration No. 2191980 for the mark with AS SEEN ON
TV disclaimed for “Christmas tree stands,” in International Class 28;
• Registration No. 3097660 for the mark
with AS HEARD ON PUBLIC TV disclaimed for “Compact discs featuring
music,” in International Class 9;
• Registration No. 3097661 for the mark
with AS HEARD ON PUBLIC TV disclaimed for “DVDs featuring concerts
and programs of general interest,” in International Class 9; and
• Registration No. 4337205 for the mark with AS SEEN
ON TV disclaimed for “Electric bag sealers,” in International Class 7.
The Examining Attorney also introduced an Amazon.com listing for a music
compact disc box set comprising a compilation of music from TV shows. The title of
the compact disc set, shown, below, is “As Heard on TV.”

5 Examining Attorney’s Br., p. 6; 11 TTABVUE 6.
6 Office Action of March 6, 2015.
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7
Applicant makes a number of arguments against the requirement for a disclaimer.
Applicant admits that AS HEARD ON TV may be descriptive of some services but
argues that the mark is not merely descriptive of its particular services because the
music is new and offered to sophisticated consumers:
AS HEARD ON TV is an extremely implausible and
maladaptive descriptor of any aspect of the applied-for
services. The Phrase, as a descriptor, conveys that one has
heard the music on television before. Conversely, Applicant
takes pride in offering music that is exclusive and unlikely
to have been heard on television previously. Applicant
provides its services in a niche industry, and its clients are
highly sophisticated. If Applicant’s clients simply wanted
to incorporate music that they had already heard on
television into their own content, they could almost

7 Denial of Request for Reconsideration of March 20, 2017, p. 7.
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certainly find and license the rights to this music
themselves without employing Applicant’s services.8
This argument is unpersuasive. Applicant’s identification of services does not
limit the compositions to ones that have never been played on TV. Further,
Applicant’s argument that its music is “unlikely to have been heard on television
previously” is undercut by Applicant’s own website which advertises that the music
listed under the AS HEARD ON TV label is “Proven TV friendly music covering all
production themes.” Moreover, even if a particular composition has not been heard
on TV, it nevertheless may be similar to compositions that have played on TV; that
is, it is a “Proven TV friendly” composition. Thus, consumers looking for music under
the AS HEARD ON TV label would expect that the compositions had played on TV or
were similar to music that had played on TV. In addition, Applicant presents no
evidence that its consumers are sophisticated.
Applicant argues that the USPTO’s treatment of “HEARD ON THE . . .” formative
marks compels the conclusion that AS HEARD ON TV is inherently distinctive. In
support, applicant introduced a number of Principal Register third-party
registrations comprising marks including the language “HEARD ON THE . . .” used
in connection with a variety of newsletters and publications:9

8 Applicant’s Br., p. 7, 8 TTABVUE 8.
9 Some of the registrations have been cancelled and are not evidence of any presently existing
rights in a mark. See, e.g., Action Temp. Servs. Inc. v. Labor Force Inc., 870 F.2d 1563, 10
USPQ2d 1307, 1309 (Fed. Cir. 1989); In re Binion, 93 USPQ2d 1531, 1535 n.3 (TTAB 2009).
Nevertheless, in the interests of completeness, we have considered them.
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• Registration Nos. 947617 and 2163564 for HEARD ON THE STREET for a
“section of a newspaper,” in International Class 16 and “Television
programming in the nature of business and financial news and
information,” in International Class 41;
• Registration No. 2539544 for HEARD ON THE NET (registered under
Section 2(f)) for “Printed magazine columns in the fields of finance and
business,” in International Class 16;
• Registration No. 2457285 for HEARD ON THE NET (NET disclaimed) for
“Computer services, namely, providing an on-line newspaper column in the
field of finance and business services,” in International Class 42;
• Registration No. 4058012 for HEARD ON THE HILL for a “Newspaper
column in the field of government and politics,” in International Class 16
(registered under Section 2(f)) and “Providing on-line publications in the
nature of newspaper columns, alerts, and e-mails in the field of government
and politics,” in International Class 41;
• Registration No. 3777710 for HEARD ON THE STRIP “HOTS” for a
“Downloadable electronic newsletters delivered by email in the field of
financial research in the gaming industry,” in International Class 9; and
• Registration No. 3996188 for HEARD ON THE BEACH for a “Publications,
namely, newsletters and research reports featuring real estate, finance and
investment,” in International Class 16.
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Applicant argues that “[i]f all of the above marks are at least suggestive, AS
HEARD ON TV must be inherently distinctive as well, because this Phrase betrays
no characteristics of the music selected or composed by Applicant in the course of
rendering its services.” We disagree. We find that the above marks do not have the
same level of specificity or connotation as Applicant’s mark. Phrases like HEARD ON
THE STREET or HEARD ON THE BEACH when used in connection with
publications suggest that the information provided is second-hand news or rumor. In
contrast, AS HEARD ON TV in Applicant’s mark immediately suggests that the
particular music actually has been heard on TV. In other words, the term “heard” in
Applicant’s mark has a more objective connotation than it does in the above third-
party “HEARD ON THE . . .” marks cited by Applicant.
Moreover, two of the above marks registered under Section 2(f) which is an
admission that the mark is not inherently distinctive. See Cold War Museum, Inc. v.
Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009).
And two of the registrations for “HEARD ON . . .” marks submitted by the Examining
Attorney have disclaimed the wording. Registration Nos. 3097660 and 3097661
include a disclaimer of AS HEARD ON PUBLIC TV when used in connection with
compact discs and DVD’s featuring music. These marks and the respective goods
more closely resemble Applicant’s mark and music-related services, and thus serve
as a better indicator of USPTO disclaimer practice in such marks.
In sum, the third-party registrations show no more than that HEARD ON . . . is
sometimes treated as descriptive and sometimes not—depending on the mark and
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the particular goods or services identified. In any event, it is well settled that each
case must be decided on its own facts. See In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had some
characteristics similar to [Applicant’s] application, the PTO’s allowance of such prior
registrations does not bind the Board or this court.”); In re Merrill Lynch, Pierce,
Fenner & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987).
Applicant argues that AS HEARD ON TV is a double entendre when compared
with AS SEEN ON TV. Applicant argues that “the obvious and nondescriptive
reference to the AS SEEN ON TV infomercials creates a double entendre, making the
Phrase unitary and inherently distinctive.”10 “A ‘double entendre’ is a word or
expression capable of more than one interpretation. For trademark purposes, a
‘double entendre’ is an expression that has a double connotation or significance as
applied to the goods or services.” TMEP § 1213.05(c). Here, the phrase AS HEARD
ON TV has no such “double connotation or significance.” Rather, it simply is a
variation of the phrase AS SEEN ON TV to account for the fact that music cannot be
seen on TV, only heard.
Applicant argues that AS HEARD ON TV is not merely descriptive of its music
composition services because such a finding would render these services illegal:
If Applicant truly is “composing” music that has already
been heard on television, this is not composing at all—this
is copying of existing music. Unless the music is in the
public domain (or unless Applicant owns or has licensed
the copyrights in the underlying musical composition), it
would be copyright infringement for Applicant to copy

10 Applicant’s Br., p. 10, 8 TTABVUE 11.
Serial No. 86454380
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music that is already on television and deliver this
“composed” music to clients for exploitation.11
This argument is unpersuasive. As applicant admits, the music could be in the
public domain or be licensed. The music composition services also could include
reworking an existing composition from Applicant’s AS HEARD ON TV library. And
it is possible that consumers, upon seeing the AS HEARD ON TV mark, could
understand the mark to mean that Applicant’s composition services specialized in
compositions for the TV market. For these reasons, a finding that AS HEARD ON TV
is merely descriptive does not imply that Applicant’s services are illegal.
Finally, Applicant requests that the Board limit the disclaimer to only some of
Applicant’s services: “[I]f the Board finds the Phrase descriptive for any other services
in the Application, Applicant requests that music composition services be exempted
from that finding, pursuant to TMEP § 1213 (“A disclaimer may be limited to pertain
to only certain classes, or to only certain goods or services.”).12 We decline to do so
because we find that AS HEARD ON TV is merely descriptive of all of Applicant’s
services including “music composition services.” As discussed above, a disclaimer is
appropriate regarding Applicant’s “music composition services” because the services
could include re-working one of Applicant’s AS HEARD ON TV compositions or
because the services specialize in composing for TV.
For the forgoing reasons, we affirm the Examining Attorney’s requirement for a
disclaimer of AS HEARD ON TV.

11 Id. at 8, 8 TTABVUE 9.
12 Id. at 9, 8 TTABVUE 10.
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Decision: The refusal to register Applicant’s mark based on the requirement,
made under Trademark Act Section 6(a), for a disclaimer of AS HEARD ON TV, is
affirmed. However, if Applicant submits the required disclaimer of AS HEARD ON
TV to the Board within thirty days of the mailing date of this decision, this decision
will be set aside.13 See Trademark Rule 2.142(g), 37 C.F.R. § 2.142.

13 The disclaimer should state that “No claim is made to the exclusive right to use AS HEARD
ON TV apart from the mark as shown.”