April 06, 2018

Things Were Breaking Fast for the Serial Podcast Last Week

The groundbreaking Serial podcast was involved in two very different legal developments last week. The one that made the news involved its protagonist, Adnan Syed. The other, which you could be excused for having missed, involved its trademark.

The Serial podcast was a huge hit that introduced a lot of people â including me â to the world of podcasts. Its first season told the story of Adnan Syed, who was in jail, having been convicted of the murder of Hae Min Lee. Syed and Lee were high school students at the time of her murder and Lee had broken off a romantic relationship with Syed. Syed ultimately was convicted despite various holes in the prosecution's case. Syed continued to maintain his innocence, and the podcast, in 12 episodes, compellingly explored the facts and the trial of the case from different angles.

On March 29, the Maryland Court of Special Appeals granted Syed's request for a new trial. The court found that Syed had had ineffective assistance of counsel in that his attorney had failed to investigate a potential alibi witness whose testimony would have put Syed somewhere other than the scene of the crime at the time when the state claimed Lee was murdered. Although the appeals court did not exonerate Syed, he does get another chance to convince a jury that there is at least reasonable doubt as to whether he committed the murder. Fans of the show will no doubt be following developments in the case. The first issue will be whether the state wants to re-try the case given the factual weaknesses and the fact that Syed has already spent 18 years in prison.

For this blog, though, the big news was that the company that produces the Serial podcast, Serial Podcast, LLC, won some and lost some in its attempt to register the SERIAL trademark in different forms. The Trademark Trial and Appeal Board even issued a precedential opinion, which is of course super-exciting. The decision came out on March 26, just days before the decision in Syed's case.

The question was whether Serial's mark â the word SERIAL in word form and in logo form â can be registered as a trademark.

The application to register the word SERIAL as a trademark failed because the Board held that "serial" is generic for the services - "entertainment in the nature of an ongoing audio program featuring investigative reporting, interviews, and documentary storytelling." A generic term is one the relevant public would understand as the common descriptive name of the type of goods or services. In this case, a "serial" is a story told in multiple episodes, which is an apt description of the podcast. Generic terms can never attain trademark status, so even though the public might understand that "Serial" referred to a specific show, no amount of proof of that public recognition could save the application to register the nameas a trademark.

The logo was a different story. Serial Podcast was trying to register two versions of the logo, one with color and the other without, as shown here:

Scruton Serialbw
Scruton Serialcolor

Often a logo can provide the distinctive material that will allow registration, although even with a registration, Serial Podcast would not get protection for the generic word "serial." The registration would protect against others using a similar logo, but apart from that, competitors could use the word "serial" however they wished.

The trouble was, even the graphic aspects were not very distinctive. The letters themselves are rather plain, particularly in the version without color. And the Board didn't think putting the letters in rounded rectangles was very distinctive either.

Fortunately for Serial Podcast, there was some good (and unusual) evidence of public recognition that the Board found compelling. The Board was impressed with the use of the mark or close facsimiles in a Saturday Night Live parody sketch and in a Sesame Street graphic. Here is a screenshot of SNL's Cecily Strong as the reporter/narrator of the podcast, with the logo behind her.

Scruton Serial Dj

And here is the Sesame Street piece with a slightly altered version of the logo:

Scruton Serial Cerel

The Board reasoned that the humor in those pieces only works if the public recognizes the reference, so such high-profile uses were strong evidence of the public's awareness of the logo.

The Board also found that knock-off merchandise using the logo, like the t-shirt below, were evidence of the public's recognition, although it warned that Serial Podcast shouldn't let unauthorized uses get out of hand.

Scruton Serial Tshirt

With all that, the Board found sufficient evidence to show that the logo was had acquired distinctiveness, so that the public recognized it as referring to Serial Podcast's services.

The registrations had not issued as of April 5, but should be coming soon.

Meanwhile, serial fans, an entity related to Serial Podcast applied to register S-TOWN and the logo and those applications went through without a hitch â see Reg. Nos. 5323056 and 5323149. You make it a lot easier on yourself when you pick a mark that is distinctive even without an SNL appearance.

Scruton Serial S Town
You can watch the whole SNL parody at this link: https://www.youtube.com/watch?v=ATXbJjuZqbc