Many YouTube users create a strong presence on the video-hosting website, establishing themselves and their username as a brand or even an empire. As YouTube has evolved into more than just a video site – arguably a career-launching and income-making platform – users logically may seek trademark protection of their usernames through federal registration with the USPTO.
The company LegalZoom instructs readers that users may be able to gain trademark protection because “most companies that maintain a channel of proprietary videos include their trademark in their YouTube name or elsewhere on the page and within the account.” Ref.
Merely associating a username with a media-hosting account as one’s sought-after trademark, however, will likely fall short of the USPTO‘s “use in commerce” requirement. Federal trademark registration traditionally requires use of the trademark “in U.S. commerce” to obtain a registration. 15 U.S.C. § 1051.
In December 2012, the Trademark Trial and Appeal Board (TTAB) issued a final decision in regard to an applicant’s mark, which was his YouTube username. The TTAB affirmed their denial of a trademark registration to applicant Gary K. Rogowski, who sought to trademark his username, “Active Reasoner,” in International Class 9, audio recordings featuring music (In re Rogowski, 2012, TTAB, Serial No. 77083475).
The applicant had included a screen image of his YouTube video and page as a part of his statement of use. The examining attorney first rejected the application, stating that a video is not an audio recording, as Class 9 includes, and that the audio was not clearly identified as downloadable, which would make it a part of commerce. Upon appeal, the TTAB did not address the examiner’s differentiation of audio and video recordings, but affirmed the rejection because the statement of use did not “show the required correspondence between the mark and the identified goods being offered for sale or transport in commerce,” mainly because there was no readily available “download” link for the consumer.
Some YouTube videos do have “download” links on the page which reroute the watcher to iTunes or Amazon, but this is typically for more established artists with sales and mark use elsewhere. For the independent artist not yet in the iTunes music store or involved in any other use in commerce, LegalZoom’s statements regarding username trademark protection are misleading. The TTAB likened Mr. Rogowski’s use of the mark as “an on-line retail[er]…which fails to show a means for ordering the goods or service,” and cites a number of registration-refusal precedents. The Board also did not accept Mr. Rogowski’s argument that many consumers use outside software or tools to download YouTube videos, stating that the absence of a direct link to download on the statement of use’s face failed to meet the requirements.
For YouTube users looking to gain trademark protection, creating use in commerce beyond posting videos is crucial. This can be accomplished through simply adding a “download” link to a YouTube page or creating an alternative webpage with purchasable items (albums, downloads, etc.), products (think merchandising), and other use in commerce, to cite in the statement of use. One link can make the entire difference in gaining the trademark protection.