Originally Published On JD Supra Platform
In a precedential decision, the Trademark Trial and Appeal Board (“Board”) reversed the decision of the Examining Attorney, concluding that BOYS WORLD for “audio recordings featuring music,” in International Class 9 functioned as a trademark. ZeroSix, LLC, 2023 U.S.P.Q.2D 705 (TTAB May 1, 2023).
“Boys World” is the name of a musical “girl group” that “is sometimes referred to as ‘the Gen Z Spice Girls.’” The Examining Attorney refused registration for failure to function as a trademark because BOYS WORLD is “merely the name of a performing group and would not necessarily be seen as a source identifier.” Applicant, ZeroSix, LLC, appealed.
The Board began its analysis by noting that a performing artist’s name can function as a trademark, such as “Bruce Springsteen” or “Rolling Stones” identifying “Born to Run” or “Exile on Main Street,” but not every performing artist’s name necessarily serves as a trademark. “Typically, in order to function as a mark for recordings, a performing artist’s name must be used for a series of recordings.”
After the initial refusal by the Examining Attorney, Applicant submitted substantial evidence that the mark was used for a series of recordings, and that element was not at issue on appeal. Instead, the Board focused on “whether the applicant met their burden of proof by providing sufficient evidence of promotion and recognition such that the performing artist’s name in the mark would be perceived by consumers as identifying the source of the series and not merely the recording artist.”
Reviewing the specimens submitted by Applicant, which included pages from Spotify, Apple Music, Amazon Music, and YouTube, the Board determined that BOYS WORLD was prominently displayed on the “cover” of these pages and in related promotional materials. Thus, the specimens “promote BOYS WORLD, and enable consumers to play or download BOYS WORLD music.”
The Board also emphasized the wide recognition the mark received through 190,000 followers on Instagram, 31,200 followers on Twitter, 154,000 subscribers on YouTube, and 335,000 monthly listeners on Spotify.
As a result of this wide recognition and the consistent identification, by “streaming services and social, print and web media” of BOYS WORLD as the source of Boys World’s music, consumers “know what they are getting” when they purchase a BOYS WORLD album. This is the quintessential sign of a trademark, so BOYS WORLD functions as a mark.
The Board reversed the decision of the Examining Attorney and registered BOYS WORLD for “audio recordings featuring music.”
