4K for All: Help Prevent DIRECTV From Trademarking 4K

By Michael Silbergleid, president, SilverKnight Group, and contributing editor, Sports Video Group

On Feb. 21, the folks at DIRECTV filed trademark applications for a variety of 4K-related terms. Those included 4KN, 4KNET, 4K Network, 4KNetwork, and 4K. Yes, plain old 4K.

I don’t have any problems with 4KN, 4KNET, 4K Network, and 4KNetwork, but I have a major problem with DIRECTV’s trying to trademark “4K” ( trademark application serial number 85856740).

4K is an industry term, and we like it. But it is also somewhat problematic legally, because 4K doesn’t necessarily have a horizontal resolution of 4,000 pixels, but 3,840 pixels (x2,160 pixels), which is why the CEA uses the terms “Ultra High-Definition” or “Ultra HD”: electronics manufacturers don’t want to be sued for using “4K” and not actually selling a TV with 4,000 horizontal pixels.

And there is also an existing “4K” registered trademark and other trademark applications for “4K” as well. We’ll get to those further down.

First, “4K” would be a registered service mark. According to the United States Patent and Trademark Office (USPTO), “a service mark is a word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of a service rather than goods. The term ‘trademark’ is often used to refer to both trademarks and service marks.”

As a service mark, it would look like this before the trademark is granted: 4K . It would look like this after the trademark is granted: 4K®.

If the 4K trademark is granted, your 4K can’t be called 4K because it could be confused with DIRECTV’s 4K, and that would be bad (mostly for you).

So let’s look at DIRECTV’s trademark application. The first thing to understand is trademark classes. These are the areas that the trademark would be protected in. DIRECTV wants trademark protection in two classes, Class 38 (telecommunications) and Class 41 (education). What DIRECTV wants with respect to Class 38 is exclusive use of “4K” in the following: satellite television broadcasting; satellite transmission services; broadcasting programs via global computer network; video-on-demand television-transmission services; streaming of audio and video content via the Internet, other computer networks, wireless networks, and electronic communication networks.

With respect to Class 41, DIRECTV’s exclusive use (according to its trademark application) would be for the following: distribution of television programs for others; television programming; programming on a global computer network; pay-per-view television programming; video-on-demand television programming; production and distribution of television programs; providing on-line interactive computer databases featuring television-programming lists and schedules; providing on-line interactive computer databases featuring information about television shows, movies, and other digital images, audio, video, and other multimedia content, all in the field of entertainment; providing a Website featuring information about television programming.

Those are very, very broad, as most trademark applications are. The result, if granted? Almost nothing else in our industry related to visual electronic media could be called “4K.”

Does this make you a bit angry? It makes me angry.

As of April 10, the status of DIRECTV’s “4K” trademark is questionable, and the trademark has been refused for a number of reasons, not the least of which is that an attorney for the trademark office found that 4K merely describes a feature of DIRECTV’s services. DIRECTV has six months (until Oct. 10) to submit evidence and arguments in support of registration.

But, ironically, the registration was refused also because of confusion with U.S. registration number 4119847. What mark is that? It’s “4K” of course, and it’s in the same classes, and no one in the industry noticed. The trademark was granted on March 27, 2012, to 4K Computer LLC of Houston. It’s even broader in scope than DIRECTV’s application, but 4K Computer got its application in before DIRECTV did. But the broadest protection comes with the use of “4K” for “broadcasting of television programmes [sic].”

Examining Attorney Kathleen M. Vanston put it this way: “In the present case, applicant’s mark is 4K, and registrant’s mark is 4K. Thus, the marks are identical in terms of appearance and sound. In addition, the connotation and commercial impression of the marks do not differ when considered in connection with applicant’s and registrant’s respective goods and/or services. Therefore, the marks are confusingly similar.

“Registrant is using its mark in connection with radio, television, Internet, and video-on-demand broadcasting and the provision of telecommunication access to television programs and films,” she continued. “Applicant intends to use its mark on television, Internet, and video-on-demand broadcasting, along with television-program production and distribution and television programming. Both registrant and applicant are providing or intend to provide broadcasting services. Moreover, registrant provides access to television programs which may be produced by applicant. The services of the parties, therefore, are highly related. The similarities between the marks, therefore, and the relatedness of the services create a substantial likelihood that consumers may be confused as to the source of the services.”

But Wait … There’s More
There’s also another application (serial number 85756675) for a “4K” trademark, filed by Konami Digital Entertainment of Japan before DIRECTV’s application. And Classes 38 and 41 were included (since the filing, Class 38 has been refused in a final action). Should that application be granted, DIRECTV’s application for Class 41 protection would be refused due to confusion between the two marks. By the way, the Konami application in the remaining classes should be opposed as well.

If these actions could impact your company’s business, it is time to do your part and forward a link to this post to your corporate legal department. Why legal? Because opposing a trademark is not only a legal process but a costly one. Opposing DIRECTV’s “4K” would cost $600. And don’t think that some other company will oppose “4K”; it might be thinking the same thing. Someone needs to oppose, and I don’t have 600 bucks lying around gathering dust (I also don’t make any 4K hardware or videos — yet; my Grass Valley EDIUS NLE fully supports 4K, so I could make a 4K graphics video today, if I wanted to).

Before I go on to the official USPTO procedure for opposing a trademark application, I want to make it clear that I am NOT going to file an opposition, but some organization in the industry should. Perhaps the CEA or even SMPTE or a host of equipment manufacturers. ESPN wants to be in the 4K space; it should file to oppose the application or forget about calling it 4K, except for its DIRECTV feed. Perhaps someone should challenge 4K Computer’s “4K” trademark.

By the way, you can also voice your opinion directly to DIRECTV at [email protected].

Opposing an Application
Below is the official procedure. It requires some diligence because it’s up to you to find out when the trademark is published for opposition:

Before registering a trademark, the USPTO publishes the trademark in the Official Gazette. The Official Gazette is a weekly publication that identifies the trademarks that the USPTO has approved for registration. Any party who believes he or she will be damaged by the registration of the trademark can file an opposition to the registration.

If you wish to file an opposition, you should monitor the status of the application by checking the Trademark Status and Document Retrieval (TSDR) to determine the date the trademark will be published in the Official Gazette, at http://tsdr.uspto.gov/. Enter the serial number in the box next to the text “US Serial No.” and click the blue “Status” button. Once the USPTO publishes the trademark in the Official Gazette, you have 30 days to either (1) file an opposition to the trademark with the Trademark Trial and Appeal Board (TTAB) or (2) request an extension of time to file an opposition.

FEES:
You must pay a fee of $300 for each class of goods or services that you oppose when filing a notice of opposition. An opposition submitted without the required fee will not be accepted.

HOW TO FILE AN OPPOSITION:
The TTAB requests that all TTAB submissions be made online using the TTAB electronic system ESTTA at http://estta.uspto.gov/.

ADDITIONAL INFORMATION:
If you need more information on filing a notice of opposition, you can contact the TTAB Assistance Center at 571-272-8500 or toll-free at 800-786-9199, and you can refer to the online information at http://www.uspto.gov/trademarks/process/appeal/index.jsp.