Cable Operators

Trademarking ‘Everywhere’

7/19/2010 12:01 AM Eastern

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

September