UHDA Urges PTO to Withdraw Refusal of Filmmaker Mode Trademark Application
Extensive case law supports withdrawing Patent and Trademark Office refusal to approve Filmmaker Mode as a registered certification mark, argued the UHD Alliance Wednesday in a request for reconsideration. PTO examining attorney Catherine Caycedo rejected UHDA’s application in April, ordering the alliance to disclaim all the wording in the mark “because it is not inherently distinctive.” In her rejection, Caycedo incorrectly concluded that certified users of Filmmaker Mode technology "presumably include consumers who make films."
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Filmmaker Mode, introduced in August 2019, is the uniformly named ease-of-access TV picture setting free of the motion-smoothing and other image processing that creators disdain for rendering their content in the living room as if it were shot on high-speed video rather than film (see 1908270001). Hisense, LG, Samsung and Vizio are backing Filmmaker Mode in the U.S. Kaleidescape is also a Filmmaker Mode supporter, as are Panasonic and TP Vision for TVs sold in Europe.
The words in the Filmmaker Mode logo are “unregistrable” because they are “merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of the goods applicant will certify,” said Caycedo in April. UHDA asked her to reconsider “under the standard that to be considered merely descriptive, a mark must immediately describe a quality, characteristic, function, feature, purpose, or use of the goods.” UHDA “submits” that the Filmmaker Mode mark “is at least suggestive, rather than descriptive and is, therefore, entitled to registration,” it said.
The logo certifies to consumers that TVs bearing the mark "have met certain technical specifications which produce a specific cinematic experience,” said UHDA. “Modern electronics offer consumers incredible possibilities in terms of their technical capabilities.” Newer TVs have “post-processed motion interpolation features,” plus “vivid coloring options,” it said. “This trend developed in part for manufacturers to have more vivid in-store live displays and dynamic or static advertisements, to help draw attention and set them apart from the pool of competitors.”
Motion-smoothing “ultimately evolved into a now-common feature” on modern TVs, called different names by various manufacturers, said UHDA. “While innovative, and preferred by some consumers, for many viewers this can feel wrong -- even if it’s difficult to pinpoint exactly why.” TVs typically ship from the factory with motion-smoothing “enabled by default,” and consumers “may not be aware of the feature or how to turn it off.”
UHDA has made strides toward giving consumers “a long-desired option” in technology that “delivers and projects the content as intended by the original creators of that content,” said the organization. UHDA and its members invested “a great amount of effort to have the certification become accepted across many well-known electronics manufacturers, to reduce confusion among consumers about what features they are purchasing,” it said. “These efforts have had the objective of developing a consistent certification mark with accompanying industry-wide standards across many electronics brands.”
Devices certified for Filmmaker Mode “allow consumers to view content with better coloring and picture quality, including reducing graininess and dark lighting that auto features such as exaggerated color settings frequently do not get right,” said UHDA. Imagine a newlywed couple buying a TV to watch movies in their first new home, it said. “This scenario perhaps inches closer to the dictionary meaning of the term FILMMAKER.”
But UHDA “submits that this connection is tenuous, and at most is suggestive” of the class of goods bearing the logo, it said. It’s not descriptive, “since the term lacks the requisite immediacy.” The U.S. Court of Appeals for the Federal Circuit has said a mark is merely descriptive if it immediately conveys qualities or characteristics of the goods, and a merely descriptive mark qualifies for registration only if the applicant shows that it has acquired a secondary suggestive meaning.
PTO has approved at least nine trademarks bearing the word “mode,” all without “a disclaimer requirement,” said UHDA. Samsung’s Interior Mode trademark, granted in December 2018, is “suggestive” of TVs that are “somehow specialized for use in the interior rooms of a dwelling, rather than on a patio or outdoor deck,” it said. The trademark is not “merely descriptive,” as evidenced by the PTO examining attorney’s “approval of the mark for publication without raising a disclaimer issue or a merely descriptive refusal.” it said.
UHDA acknowledges examining attorney Caycedo isn't bound by the earlier decisions of another PTO lawyer. But it urged her “to act consistently for the matter at hand, because consistency in examination of trademark applications is a legitimate concern.” Consistency also is an agency “objective,” it said. UHDA’s arguments are “more than sufficient” to convince Caycedo to withdraw her refusal, it said. “In the alternative,” Caycedo should approve Filmmaker Mode because it has gained “distinctiveness” under the Lanham Act, based on its “significant and high-profile exposure” to consumers since 2019, and “substantial use in commerce since at least July 2020,” it said. Caycedo didn’t respond to questions Friday. UHDA's next recourse would be to take the case to PTO's Trademark Trial and Appeal Board. UHDA President Mike Fidler declined comment.