Trademarking ‘Everywhere’

Time Warner Inc. Application Clears, Dish’s Is Suspended

By Todd Spangler -- Multichannel News, 7/19/2010 12:01:00 AM

TV Everywhere? Try “On Demand Everywhere.”

That could be Time Warner Inc.’s brand name for services that deliver video to viewers across multiple screens, according to applications with the U.S. Patent and Trademark Office.

Earlier this month, the agency approved Time Warner’s claims on “On Demand Everywhere” filed last summer — and also dealt a setback to Dish Network by suspending its application to trademark “TV Everywhere.” The PTO cited Time Warner’s prior “On Demand Everywhere” trademark application as potentially nullifying the satellite operator’s claim.

Even before the PTO officially suspended Dish’s application, the agency had accepted a “letter of protest” in March from an anonymous party that pointed out the “TV Everywhere” term has been a generically used phrase in the industry. The letter’s 199 pages of documentation included news articles, blog posts, press releases, marketing materials and analyst reports. The agency does not publicly identity parties that lodge such trademark protests.

“It has been determined that the evidence submitted by the protester is relevant and supports a reasonable ground for refusal appropriate in ex parte examination,” Janis Long of the Office of the Deputy Commissioner for Trademark Examination Policy wrote in the memo to the PTO attorney reviewing the Dish application.

The protest letter citations included more than a dozen Multichannel News articles, many of them predating Dish’s application.

Dish and Time Warner declined to comment on the developments.

Dish filed to trademark “TV Everywhere” in September 2009, as first reported by Multichannel News. At the time, the term was already being used generically by TV programmers and distributors, including Time Warner Inc. chairman and CEO Jeff Bewkes, to refer to authenticated video services available on devices other than traditional television sets.

Three months earlier — in June 2009 — Time Warner filed a similar trademark application for “On Demand Everywhere” indicating that it intended to use the mark commercially.

“Since [Dish’s] effective filing date is subsequent to the effective filing date of the [Time Warner] application(s), the latter, if and when it registers, may be cited against this application in a refusal to register,” the PTO said in a July 1 notice to Dish.

Before Time Warner’s “On Demand Everywhere” trademark can be officially registered, the company must next file a “statement of use” within six months. Separately, Time Warner has registered the OnDemandEverywhere.com domain name.

Time Warner’s “On Demand Everywhere” application cites “transmission of television broadcasting, video, images, audio and data information via the Internet, satellite, cable, wireless, fiber optics and computer networks.” The Dish application for “TV Everywhere” provides a similar description covering, among other things, “transmission of audio, video and data via satellite, Internet or other communication networks.”

Under PTO procedures, Dish may submit a request to remove its application from suspension to present arguments related to the conflict with the Time Warner filing.

The satellite-TV operator currently markets its Sl ingbox products, including the ViP 922 “SlingLoaded” DVR, under the “TV Everywhere” banner. Slingbox technology allows users to access their full TV lineup, DVR recordings and on-demand content over the Internet via a Web browser or mobile device. Dish also is gearing up to launch a Web site this year that will let subscribers log in to watch extra TV content.

Tale of two video trademarks:

June 17, 2009: Time Warner Inc. applies to trademark “On Demand Everywhere.”
Sept. 17, 2009: Dish files application to trademark “TV Everywhere.”
March 16, 2010: Patent office enters protest letter challenging Dish’s claim on “TV Everywhere” that cites generic usage of the term with 199 pages of supporting documentation.
July 1, 2010: Dish’s application is suspended pending Time Warner’s application.
July 6, 2010: Patent office issues notice of approval to Time Warner for “On Demand Everywhere.”

SOURCE: U.S. Patent & Trademark Office