As part of a trademark fight over "TV Everywhere" that could stretch into next year, Dish Network has argued that the term is neither generic nor merely descriptive -- and claims its use of "TV Everywhere" has become successfully associated in consumers' minds with the satellite TV operator's Slingbox-enabled DVRs.
Dish filed for trademark protection on "TV Everywhere" on Sept. 17, 2009, and after procedural delays the U.S. Patent & Trademark Office published its application for opposition last fall.
In February, Time Warner Inc., the five biggest cable operators -- Comcast, Time Warner Cable, Cox Communications, Charter Communications and Cablevision Systems -- as well as DirecTV and Hulu filed oppositions with the U.S. Patent & Trademark Office's Trademark Trial and Appeal Board. They all complained that "TV Everywhere" has been used generically by the industry to describe authenticated online video services, in some cases prior to Dish's trademark application.
Dish on Friday, May 4, filed replies to the MSO, Hulu and DirecTV oppositions with the Trademark Trial and Appeal Board effectively denying that other companies have used "TV Everywhere" generically in reference to their products or services over the last several years.
"Given the duration, extent, and nature of [Dish's] usage of the ‘TV Everywhere' mark, applicant's mark ‘TV Everywhere' has attained secondary meaning," Dish said in its filings Friday. "Applicant has been successful in creating a commercial impression for the mark through its advertising, and the consuming public recognizes the mark ‘TV Everywhere' as a source indicator for Applicant's services."
A Google search of the exact phrase "TV Everywhere" yields 10.5 million results. As Hulu pointed out in its complaint, Dish shows up as the No. 2 result -- after Wikipedia's entry on the term citing the June 2009 press conference held by Comcast and Time Warner Inc. during which "TV Everywhere" was generically used by both companies.
Dish currently uses "TV Everywhere" to promote its Slingbox products, which provide access to live and recorded video programming to multiple devices over the Internet, plus the DishOnline.com website and Blockbuster @Home hybrid service that offers DVDs-by-mail and video streaming.
Dish has not yet filed a reply to Time Warner Inc.'s opposition, instead requesting and receiving an extension until June 3 to file an answer. In its complaint Feb. 24, the media company alleged that it had actually coined the "TV Everywhere" term.
The USPTO's Trademark Trial and Appeal Board has established a schedule in the disputes under which discovery would start this summer and run through December 2012. Currently, trial dates are set for 2013.
Dish's trademark application has serial number 77/828,705.