The Sci Fi Channel, an American channel part of the entertainment conglomerate NBC Universal, specializing in science fiction programs, has announced that it is planning on changing its name to Syfy.
Apparently, this move is in part to end confusion over how to capitalized and stylize their name and as part of a rebranding effort. Network officials stated that since “sci fi” was a genre and was not marketable, the change to “Syfy” was a tactical move to secure trade mark registration and protection.
Universal City Studios LLLP has in the las few days filed four applications with the United States Patent and Trademark Office for “SYFY” in classes 9, 28, 38 and 41, all on an “intent to use” basis. If a mark is not yet being used, an application may be filed on a good faith or bona fide intention to use the mark in commerce. An “intent to use” application must include a sworn statement (usually in the form of a declaration) that the applicant has a bona fide intention to use the mark in commerce. If an application is filed on an intent to use basis, actual use of the mark in commerce must be established before the USPTO will register the mark.
If the change in spelling from Sci-Fi to SYFY is for the purpose of securing a registered trade mark, this change may not be as straightforward as it seems. In the U.S., a slight misspelling of a word will not turn a descriptive or generic word into a non-descriptive mark. For example, the USPTO has previously held the trade
mark C-THRU to be the equivalent of “see-through” and, therefore, merely descriptive of transparent rulers and drafting aids. It is likely that an examining attorney will hold SYFY to be the equivalent of “sci-fi”, a genre, and therefore merely descriptive of a science fiction television channel and programming.
A way to overcome this, which is what Universal is likely to do if an objection is raised, is that under Trademark Rule 2.41(a), 37 C.F.R. ÃÂ§2.41(a), an applicant may submit affidavits, declarations under 37 C.F.R. ÃÂ§2.20, depositions or other appropriate evidence showing the duration, extent and nature of the applicant’s use of a mark in commerce that may lawfully be regulated by Congress, advertising expenditures in connection with such use, letters or statements from the trade and/or public, or other appropriate evidence tending to show that the mark distinguishes the goods or services. Still, building up use and distinctiveness will take some time and the marks will not register unless any and all objections are overcome.
Universal has also filed a trade mark application in the UK with the Intellectual Property Office for “SYFY” in classes 9, 28, 38 and 41.
So far, no applications for SYFY have been filed with Europe’s OHIM. If registered, a community trade mark could provide Universal with protection in all 27 European member states – it may be something for Universal to consider with the widespread popularity and recognition of its channel.
The new name will take effect on July 7, 2009.