According to the Patent and Trademark Office (PTO), the answer is “No,” as the PTO recently refused an application by the producer of the podcast to register the mark SERIAL for an ongoing audio program, finding that the mark was too “descriptive” to be registered (the decision and related documents can be found here – note it is a relatively big file). This case demonstrates the need for companies and other content creators to be creative in choosing the brands by which their works will be known, as a name that is too generic may face hurdles like this one when the creator tries to protect its brand through a federal trademark registration. Media companies all need to think carefully about program names and other brands to be sure that they can be protected – especially if they hit it big.
SERIAL is the Peabody award-winning podcast from the creators of the public radio program This American Life. The podcast, narrated by journalist Sarah Koening, is a long form story, told over the course of multiple episodes, that looks into the 1999 murder of Hae Min Lee and the resulting conviction of her former boyfriend, Adnan Masud Syed. Since its launch in October 2014, Season 1 has been downloaded in the United States over 80 million times, with episodes still being downloaded at a clip of over a 100,000 times a month. Season 2 of SERIAL just concluded last week. Media observers have called SERIAL a phenomenon which fueled the 2014 podcast renaissance. Given that it is so well-known and successful, why did the PTO refuse to register the name of this groundbreaking podcast?
Under federal trademark law, marks that are deemed to be “descriptive” of the proposed goods or services are not automatically entitled to federal registration. Unfortunately in this case, the PTO found the mark was just that, concluding that the term SERIAL “immediately describes a feature or characteristic of the applicant’s services, specifically, the applicant’s ongoing audio program is a serial and features a story that is broadcast in installments.” In other words, the fact that the podcast was presented in a “serial” fashion prevented the producers from obtaining a registration for SERIAL, an outcome that could potentially allow their competitors to brand a copycat podcast series using the term “serial” with impunity (such as a CRIME SERIAL podcast series).
The producer of the podcast attempted to overcome this refusal by demonstrating that the mark had acquired “secondary meaning” (i.e., that it is in fact known by consumers in the marketplace). Even if a brand is somewhat descriptive, registration may nevertheless be allowed where the brand has so closely become associated with a particular product that consumers naturally recognize that brand (for example, the term MONEY is descriptive for a magazine that deals with investments and making money, but is federally registered because consumers associate that term with a particular magazine). Here, the podcast producers submitted documents showing the surge in Google searches for “podcast serial,” the over 5,000 media stories written about the podcast, the 82 million downloads worldwide (there are only two countries in the world in which SERIAL has not been downloaded: North Korea and Eritrea) and a parody of the podcast on Saturday Night Live. Despite this compelling evidence, the PTO not only doubled down on its initial finding, but took an even more extreme position, stating that the term SERIAL is generic, meaning it is so highly descriptive that it is incapable of functioning as a trademark. In other words, if the purported brand so generically describes the product, it cannot be protected under federal trademark law (e.g. you probably couldn’t protect LAPTOPS for retail stores that sell computers).
The applicant reportedly plans to appeal this decision. Regardless of the outcome, however, it serves as an important reminder to be thoughtful and creative when choosing your trademarks. It is much easier at the beginning of the branding process to craft a trademark that is not descriptive, than to try to convince the PTO later on that your descriptive mark has the consumer recognition necessary to be granted a federal registration (a process which, by the way, is costly and could take years before a final decision is reached). Descriptive marks are also more difficult to protect – if a competitor starts to use the same or similar mark, you may have a harder time getting it to stop. By contrast, marks that are suggestive (requiring a leap of imagination, such as COPPERTONE® for suntan oil), fanciful (made-up words, such as XEROX®), or arbitrary (real words that have no relation to the product, such as YAHOO!® for Internet services) are much easier to register and enforce. So put your marketing teams to work, and make sure that they are picking strong, creative marks from the outset!