Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE SOUTHBROOK ENTERTAINMENT CORPORATION
Serial No. 574,600
August 5, 1988
Richard Keefe, Henry Klein, Richard B. Berg, Richard A. Flom, David G. Parkhurst and Colin P. Abrahams for applicant
Frank Z. Hellwig
Trademark Examining Attorney
Law Office 3
(Myra K. Kurzbard, Managing Attorney)
Before Simms, Krugman and Hanak
Southbrook Entertainment Corporation has applied to register the designation "HI-YO-SILVER" as a trademark for cinematographic films, audio and video tapes, cassettes and cartridges and viewers for use with photographic transparency and slides. [FN1]
Registration has been finally refused under Sections 1, 2 and 45 of the Trademark Act on the ground that the designation sought to be registered does not function as a trademark to identify applicant's goods and distinguish them from those of others. When the refusal of registration was made final, applicant appealed.
The term "trademark" is defined in Section 45 of the Trademark Act as "... any word, name, symbol, or device or any combination thereof adopted and used by a manufacturer or merchant to identify and distinguish his goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown."
In determining whether subject matter functions as a trademark, we must look to the usage of the subject matter based on the specimens of record. In the present case, applicant has submitted a videocassette comprising an episode of the famous "Lone Ranger" serial featuring the Lone Ranger character and his horse Silver. [FN2] The videocassette bears the trademark "SCOTCH," presumably the manufacturer of the blank cassette. When the videotape is played, it begins with the Lone Ranger character riding up on his horse and exclaiming "Hi-Yo-Silver, Away". At the time this phrase is uttered by the Lone Ranger, the words "HI-YO SILVER" appear as a subtitle at the bottom of the screen. A photograph of that frame appearing on the videocassette is reproduced below:
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
It is noted that the term "HI-YO SILVER" appears with Spanish punctuation, that is, the inverted exclamation point preceding the term and the exclamation point following said term. The tape continues with the spoken dialogue in English accompanied by Spanish subtitles appearing at the bottom of the screen.
Essentially, it is applicant's position that the phrase "HI-YO-SILVER" was adopted over fifty years ago for use in applicant's "Lone Ranger" radio shows and that through long usage on radio shows and later in comic strips, the phrase sought to be registered has become integrally associated with applicant and applicant's predecessors and has served the function of identifying the source of goods and services in connection with which the phrase is used. Applicant asserts that the oral use of the mark at the beginning of each of its films, tapes and cassettes as well as the use of the mark at the bottom of the frame of the film clearly evidence proper trademark usage. Applicant disputes the assertion that the phrase appearing on the screen is a subtitle since, applicant maintains, the phrase is a coined phrase and represents the exact words spoken by the Lone Ranger at the beginning of each "Lone Ranger" film. Since the phrase is used both visually on the frame of the film and orally at the beginning of each film, applicant concludes that the phrase "HI-YO-SILVER" indeed functions as a trademark.
*2 In support of applicant's position, it relies on a 1948 District Court decision, Lone Ranger, Inc. v. Currey, 79 F.Supp. 190, 78 USPQ 244 (D.C.Pa.1948), as evidence of the strong significance of the phrase "HI-YO-SILVER" in connection with radio shows.
It is clear that not all words, phrases, symbols and the like necessarily function as trademarks although they may have been adopted with the intent of doing so. Before a designation can be registered under the Trademark Act, it must be used as a trademark and, by such use, serve to identify and distinguish the goods in commerce. See: In re Illinois Bronze Powder & Paint Co., 188 USPQ 459 (TTAB 1975) and cases cited therein.
In the present case, we agree with the Examining Attorney that the phrase "HI-YO-SILVER," as used in the specimens of record, does not function as a trademark to distinguish applicant's goods from those of others. In this regard, we readily concede that the phrase sought to be registered is a well-known expression closely linked to the Lone Ranger character. This association of an expression with a specific character does not, however, mean that said phrase necessarily functions as a trademark for goods. As used orally and visually in the films, cassettes and tapes, the phrase "HI-YO-SILVER" would not, in our opinion, be perceived as a trademark for those goods. Rather, we think that viewers watching the various "Lone Ranger" tapes, films and cassettes would view the phrase solely as an expression or exclamation by the Lone Ranger character for the purpose of exhorting his horse. We emphasize that our conclusion herein is based, as it must be, on the use of the term as evidenced by the specimens of record. While the expression could easily perform a trademark function if used in a trademark manner, the mere utterance of the phrase at the beginning of an episode coupled with the simultaneous visual depiction of that phrase on the screen cannot transform that phrase into a trademark since it would not be perceived as such. Moreover, we note that the determination of whether a designation functions as a trademark is a fact question concerning which the judgment of the Examining Attorney is entitled to a presumption of correctness. See: In re Tilcon Warren, Inc., 221 USPQ 86 (TTAB 1984) and cases cited therein. We find no error in the Examining Attorney's conclusion that the phrase sought to be registered does not perform a trademark function. Applicant's only arguments that the term does perform a trademark function are that the term appears on the goods and that the term is well recognized. While the term may be well known as the exclamation uttered by the Lone Ranger to his horse Silver and while the term technically does appear on the goods, it is not used, as stated above, in such a manner that it would be perceived as identifying the source of the films, tapes and cassettes. We think the expression sought to be registered which is uttered by the Lone Ranger to exhort his horse is readily distinguishable in nature from such common visual and oral trademarks or service marks as, for example, the roaring MGM lion which clearly identifies the source or producer of the films in connection with which it is used. It cannot be said the words "HI-YO SILVER," as used in the specimens of record, identify the producer of applicant's goods.
*3 Decision: The refusal of registration is affirmed.
R. L. Simms
G. D. Krugman
E. W. Hanak
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 574,600 filed December 23, 1985.
FN2. Applicant originally filed as specimens herein press releases and photographs of the Lone Ranger and his horse. These specimens were rejected by the Examining Attorney, who required substitute specimens evidencing actual trademark use. Applicant then submitted the videocassette as well as a photograph of an opening frame of the "Lone Ranger" serial appearing on the cassette.
FN3. In contrast, the slogans denied registration in Illinois Bronze ("GO AHEAD--TRY AND FINGERNAIL THIS!" next to a swatch of paint) and Tilcon Warren ("WATCH THAT CHILD" on a truck bumper) conveyed merely simple, readily understood messages.
FN4. The slogan WE SMILE MORE--while describing to the public an attribute of Marriott's hotel and restaurant employees--was nevertheless entitled to registration because it also served to identify hotel and restaurant services emanating from a single source.
FN5. Cf. In re Paramount Pictures Corp., 213 USPQ 1111, 1112-13 (TTAB 1982). This Board noted that HI, YO SILVER had been accorded protection essentially as a trademark in Lone Ranger, Inc. v. Cox, 124 F.2d 650, 52 USPQ 146 (4th Cir.1942).
E. W. Hanak
The majority has affirmed the refusal to register on the basis that "as used orally and visually in the films, cassettes and tapes, the phrase 'HI-YO-SILVER' would not, in our opinion, be perceived as a trademark for those goods." I concur with the majority to the extent that most viewers of the prerecorded video cassette--the specimen of record--would not refer to the phrase HI-YO-SILVER as the brand name of the video cassette. However, while consumers may not consider a particular phrase or slogan to be the brand name for a product, those same consumers may well associate the phrase or slogan with products emanating from a single, albeit perhaps unknown, source. For example, most consumers would not regard the slogan HAIR COLOR SO NATURAL ONLY HER HAIRDRESSER KNOWS FOR SURE as the brand name for a haircoloring preparation. Rather, they would regard MISS CLAIROL as the brand name or trademark. Nevertheless, so long as the phrase or slogan serves to identify applicant's goods and distinguish them from the goods of others, it is entitled to registration. Roux Laboratories, Inc. v. Clairol Inc., 427 F.2d 823, 166 USPQ 34, 39 (CCPA 1970).
In the present case, the phrase or slogan HI-YO-SILVER as applied to films, cassettes and tapes is arbitrary and not descriptive. [FN3] Furthermore, HI-YO SILVER appears in prominent fashion (both orally and visually) at the beginning of applicant's prerecorded video cassette. In addition, HI-YO SILVER is separated from the movie itself by a sixty-second segment presenting the title of the particular movie and the cast of characters. In these respects, the phrase HI-YO-SILVER is like the MGM roaring lion logo mentioned in the majority opinion.
*4 While the phrase HI-YO-SILVER--because of its very nature--may also be perceived as a command from the Lone Ranger to his horse Silver, it must be remembered that "so far as the nature of the mark is concerned, a capability of identifying and distinguishing the source of goods or services is all that is required to support registration." In re Marriott Corporation, 517 F.2d 1364, 186 USPQ 218, 221 (CCPA 1975). [FN4] In this regard, the MGM logo could be perceived both as literally a roaring lion and as an indicator of source.
The phrase HI-YO SILVER--when spoken and/or displayed in a prominent fashion at the beginning of the video cassette and set apart from the actual movie-- serves to inform viewers that the prerecorded video cassette emanates from a single, albeit perhaps unknown, source. The phrase performs, at least in part, a source-identifying function, and as such it is entitled to registration. [FN5] The fact that in common parlance, consumers may not refer to HI-YO-SILVER as the brand name of the prerecorded video cassette does not mean that the phrase fails to perform a source-identifying function.