Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1083347 Filing date: 09/21/2020
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91246713 Party Plaintiff FremantleMedia North America, Inc. Correspondence MICHAEL J SALVATORE Address HOLMES WEINBERG PC 30765 PACIFIC COAST HIGHWAY SUITE 411, SSUITE 411 MALIBU, CA 90265 UNITED STATES Primary Email: [email protected] Secondary Email(s): [email protected] 310-457-6100
Submission Testimony For Plaintiff Filer's Name MICHAEL J SALVATORE Filer's email [email protected], [email protected] Signature /MJSalvatore/ Date 09/21/2020 Attachments Redacted T Grau Testimony Declaration.pdf(389535 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
In re App. Serial No. 88/120,245
FremantleMedia North America, Inc.,
Opposer, v. Opposition No. 91246713
AI LLC,
Applicant.
TESTIMONY DECLARATION OF TIM GRAU
I, Tim Grau, hereby declare as follows:
1. I am an Executive Vice President, Business and Legal Affairs, of Opposer
FremantleMedia North America, Inc. (“Opposer” or “Fremantle”). All of the facts set forth herein are of my own personal knowledge or are from my review of Fremantle’s business records.
2. I began working for Fremantle in 2007. Prior to taking on my current position, I was the Senior Vice-President, Business and Legal Affairs at Fremantle from 2013 to 2017, and
Senior Vice-President, Business Affairs and Business Development at Fremantle from 2018 to
2019. In my current role, I have overall responsibility for business and legal affairs for the
AMERICAN IDOL® brand, and the AMERICAN IDOL® television series and related businesses. I have had these responsibilities since 2019.
AMERICAN IDOL® History and Background
TESTIMONY DECLARATION OF TIM GRAU 3. AMERICAN IDOL® is a singing competition television series produced by
Fremantle, in which thousands of unsigned singers perform in front of a panel of three judges through multiple rounds of eliminations. In later rounds of the competition, a winner ultimately is chosen by viewers of the series who cast votes using the AMERICAN IDOL® mobile app, text messages and the Internet.
4. Over the course of my employment with Fremantle, I have become personally knowledgeable about the marketing, ratings and viewership of the AMERICAN IDOL® television series since its launch, and our extensive AMERICAN IDOL® licensing business. I have acquired this knowledge both from reviewing the business records of the company as well as from my involvement in the marketing and business affairs of this very popular television series and its related businesses.
5. AMERICAN IDOL® premiered on the FOX television network on June 11,
2002, where it aired for fifteen seasons.
6. On March 11, 2018, AMERICAN IDOL® moved to ABC, where it has aired for three seasons, with the most recent season concluding on May 17, 2020.
7. AMERICAN IDOL® launched the careers of recording artists Carrie Underwood,
Kelly Clarkson, Jennifer Hudson, Katharine McPhee, Jordin Sparks, Adam Lambert and Chris
Daughtry, among many others. These superstars and other AMERICAN IDOL® alumni collectively have won 13 Grammys, and have sold over 61 million albums, including 47
Platinum records, 95 Gold records, 444 Billboard No. 1 hits, as well as 257 million digital downloads, with two winning Golden Globes and one winning an Academy Award.
AMERICAN IDOL® Viewership and Ratings
TESTIMONY DECLARATION OF TIM GRAU 8. Since its debut, AMERICAN IDOL® has averaged between 7 million and 30 million viewers per season over its eighteen season history. A confidential Fremantle business record tracking this data that is kept and used by the AMERICAN IDOL® team in the regular course of its business is attached hereto as Exhibit A. Each and every broadcast of the
AMERICAN IDOL® television series prominently features the AMERICAN IDOL® mark on- screen, so that it is viewable by these many millions of television viewers as well as by studio audiences.
9. AMERICAN IDOL® is an extraordinarily successful television series that has been described by a rival TV executive as “the most impactful show in the history of television”
(https://www.nytimes.com/2007/02/20/arts/television/20idol.html). For an unprecedented and record-breaking eight consecutive years, from the 2003-04 season through the 2010-11 season, an AMERICAN IDOL® episode was ranked number 1 in US television ratings for each such year (https://www.tvguide.com/news/2010-11-ratings-1033838/).
10. AMERICAN IDOL® has become a pop culture phenomenon and has been the subject of numerous third party media mentions over its eighteen season run. For example,
AMERICAN IDOL® was prominently featured in the plot of an episode during Season 6 of the hit FOX show FAMILY GUY®, which itself averaged 7.94 million viewers during that season
(https://en.wikipedia.org/wiki/Family_Guy#cite_note-season6ratings-27).
TESTIMONY DECLARATION OF TIM GRAU
11. During its first season on ABC, and sixteenth season overall, AMERICAN
IDOL® was ranked the #1 entertainment show of the season on ABC in the 18-49 demographic by Nielsen, an industry leading television ratings firm, whose ratings results my team and I regularly rely on in conducting our business. Attached hereto as Exhibit B is a true and correct copy of a one-sheet prepared internally at Fremantle in the regular course of conducting our
AMERICAN IDOL® business. It is the regular practice at Fremantle for members of the
AMERICAN IDOL® team to rely on the information contained in this document. During this
2017/2018 season on ABC, AMERICAN IDOL® won audiences of up to 12.2 million viewers for certain episodes, which information is also shown on Exhibit A. Overall, the 2017/2018 season of AMERICAN IDOL® was ranked as the 8th and 9th highest entertainment series
(because it airs over two nights) amongst households across all US networks.
12. According to Google, AMERICAN IDOL® also was the top trending reality TV show of 2018.
13. During its second season on ABC, and seventeenth season overall, AMERICAN
IDOL® was again ranked the #1 entertainment show of the season on ABC by Nielsen, this time among total audiences. Attached hereto as Exhibit C is a true and correct copy of a one-sheet prepared internally at Fremantle in the regular course of conducting our AMERICAN IDOL®
TESTIMONY DECLARATION OF TIM GRAU business. It is the regular practice at Fremantle for members of the AMERICAN IDOL® team to rely on the information contained in this document. During this 2018/2019 season on ABC,
AMERICAN IDOL® won audiences of up to 10.5 million viewers for certain episodes, which information is also shown on Exhibit B. Overall, the 2018/2019 season of AMERICAN IDOL® was ranked as the 9th and 11th highest entertainment series (because it airs over two nights) amongst households across all US networks.
14. As shown on page FMNA 00124 of Exhibit D, another confidential Fremantle business record attached hereto that is kept and used by the AMERICAN IDOL® team in the regular course of its business, AMERICAN IDOL® reached 103.2 million total viewers during the 2018/2019 season, according to Nielsen. As shown on page FMNA 00125 of Exhibit C,
Nielsen also ranked AMERICAN IDOL® as the “most social” reality series and broadcast program of the season, with over 23 million social interactions, outperforming THE TODAY
SHOW (which had 21.7 million interactions), THE TONIGHT SHOW (with 14.8 million interactions) and SATURDAY NIGHT LIVE (12.8 million interactions). An “interaction” is a measurement of a social media user interacting with an AMERICAN IDOL® social media post, whether through “liking” the post, commenting on the post, or sharing the post on their own social media account.
15. After the premiere of its third season on ABC, and eighteenth season overall in
2020, AMERICAN IDOL® was ranked #1 in its time slot across TV in the 18-49 and 25-54 demographics by Nielsen, and also was the #1 ranked non-news broadcast on Sundays. Attached hereto as Exhibit E is a true and correct copy of a deck prepared earlier this year at Fremantle in the regular course of conducting our AMERICAN IDOL® business. It is the regular practice at
Fremantle for members of the AMERICAN IDOL® team to rely on the information contained in
TESTIMONY DECLARATION OF TIM GRAU this document. The 2019/2020 season of AMERICAN IDOL® was ranked as the 9th highest entertainment series amongst households across all US networks. AMERICAN IDOL® also was the #1 most social reality talent competition show and broadcast TV show of 2020 according to Nielsen, as shown on Exhibit D. Nielsen’s rankings show that AMERICAN IDOL® had over
27 million interactions in 2020, rating it above THE BACHELOR (which had 15.5 million interactions), KEEPING UP WITH THE KARDASHIANS (with 10.5 million interactions) and
THE VOICE (9.7 million social interactions).
16. In the television industry, “winning the night” that a particular show airs is considered a major accomplishment. “Winning the night” means that AMERICAN IDOL® ranked highest in viewership compared with other television shows that aired on the same date.
Fremantle regularly tracks the number of nights AMERICAN IDOL® has won. As our confidential business records show, across its three seasons on ABC from 2018-2020,
AMERICAN IDOL® has ranked as the #1 primetime show, that is, it “won the night” across all networks on 10% of its broadcast nights. This means that on 5 out of 51 nights on which it aired,
AMERICAN IDOL® has ranked as the #1 primetime show. AMERICAN IDOL® has ranked as the #1 or #2 primetime show across all networks on 59% of its broadcast nights, meaning on 30 out of 51 nights on which it aired, AMERICAN IDOL® has ranked as the #1 or #2 primetime show. In our industry, this type of success, particularly in a show’s sixteenth through eighteenth seasons, is extraordinary.
17. Given this enormous success, ABC has renewed AMERICAN IDOL® for a fourth season, which will be the nineteenth season of AMERICAN IDOL® overall. This new season premieres in the Spring of 2021.
Advertisement, Promotion and Social Media Impressions of AMERICAN IDOL®
TESTIMONY DECLARATION OF TIM GRAU 18. The FOX and ABC networks and their respective affiliates have regularly advertised and promoted the AMERICAN IDOL® mark during the series’ run, since its introduction in 2002, including through television ads on both television networks. All of these ads prominently feature the AMERICAN IDOL® mark. These ads and all of the marketing and promotional efforts for the AMERICAN IDOL® series have generated extraordinary consumer recognition of the AMERICAN IDOL® mark and services.
19. In addition, the AMERICAN IDOL® series has a strong following on social media, including over 2.57 million subscribers on YouTube, and, since March 3, 2006, over
409 million YouTube channel views on the official AMERICAN IDOL® YouTube site alone.
Using DOMO, an internal reporting tool relied on by the AMERICAN IDOL® team, which tracks video views of AMERICAN IDOL® videos on the official AMERICAN IDOL®
YouTube channel plus other associated channels, I can state that from January 1, 2016 through
August 21, 2020, there were over 2.7 billion views of AMERICAN IDOL® videos on
YouTube.
20. AMERICAN IDOL® also has over 15.7 million followers on Facebook, 1.9 million followers on Twitter, and 1.3 million followers on Instagram. Total Facebook video views of AMERICAN IDOL® videos on the official AMERICAN IDOL® Facebook page alone are over 4 billion views since tracking began on January 1, 2016. All of the followers and fans of AMERICAN IDOL® on these various social media platforms are exposed to and receive the marketing posts and videos posted by Fremantle and ABC to advertise and promote the
AMERICAN IDOL® series, all of which prominently feature the AMERICAN IDOL® mark.
21. Attached hereto as Exhibit F is a true and correct copy of a December 2018 research deck on the social media performance of AMERICAN IDOL® compared to that of the
TESTIMONY DECLARATION OF TIM GRAU THE VOICE®, a directly competitive singing competition series, which was prepared internally by Fremantle and regularly relied on in connection with the AMERICAN IDOL® business to analyze the social media engagement of AMERICAN IDOL® during its first season on ABC.
At the time, AMERICAN IDOL® was the #1 performing prime time broadcast on social media for Sunday and Monday nights, and the #1 performing reality series premiere on Facebook and
Twitter. As of the time of that report, there were over 1 million YouTube subscribers, over 1 million new Facebook subscribers added, and a staggering 514 million Facebook video views of clips from Season 16 of AMERICAN IDOL®, with each viewer seeing the AMERICAN
IDOL® mark and brand with each view. The report shows that during the 2018 season of
AMERICAN IDOL® and THE VOICE®, AMERICAN IDOL® had eight times the Facebook video views, and eleven times the Facebook interactions of THE VOICE®. In addition to the
514,000,000 Facebook video views noted above, AMERICAN IDOL® videos also were viewed over 204,000,000 times on YouTube and over 6,300,000 times on Instagram, and this is just from March 7, 2018 through May 22, 2018 alone.
22. Attached hereto as Exhibit G is a true and correct copy of a Digital & Social
Recap deck, which was prepared internally by Fremantle and regularly relied on in connection with the first season of AMERICAN IDOL® on ABC, its sixteenth overall season, which aired in 2018. Examples of several heavily viewed YouTube and Facebook videos from this season of
AMERICAN IDOL® are shown on pages FMNA 00105-106 of this deck, each of which garnered many millions of views as of the time this report was generated, and each of which prominently displays the AMERICAN IDOL® mark. As noted on page FMNA 00117 of this report, there were over 1 billion video views for AMERICAN IDOL® Internet videos on
Instagram, Twitter, Facebook, YouTube and via the AMERICAN IDOL® smart phone app
TESTIMONY DECLARATION OF TIM GRAU during the 2018 season alone, with 33% of all show viewers actively engaging with
AMERICAN IDOL® on social media in 2018. As shown on page FMNA 00120, the
AMERICAN IDOL® smart phone app was downloaded by 16% of all show viewers in 2018, with over 1.2 million individual app downloads, over 14 million user sessions and over 55 million votes cast via the AMERICAN IDOL® App in 2018 alone. At times, the AMERICAN
IDOL® App was natively ranked in the top 10 apps downloaded on both the Apple and Google app stores.
AMERICAN IDOL® Auditions and Voting
23. As noted above, the winner of the AMERICAN IDOL® singing competition ultimately is chosen through votes from our studio and television audiences. Audience votes during each season of AMERICAN IDOL® are tracked and validated by the company
Telescope, which specializes in voting services. Telescope provides Fremantle with access to various dashboards, allowing this data to be compiled, reviewed and relied on by me and my team, as well as other business divisions at Fremantle, in making business decisions pertaining to
AMERICAN IDOL®. During the first AMERICAN IDOL® season on ABC, in 2018,
105,536,320 unique votes were cast for AMERICAN IDOL® contestants. During the 2019 season of AMERICAN IDOL®, 143,986,218 votes were cast, and during our most recent season in 2020, 100,040,810 votes were cast. Currently, our voting rules allow each AMERICAN
IDOL® contestant to receive up to ten votes per voting method, per voter. To put these numbers into context, AMERICAN IDOL® holds six Guinness World Records for most public votes received by a television program! A plaque commemorating this record hangs in our offices, a photo of which is attached hereto as Exhibit H.
TESTIMONY DECLARATION OF TIM GRAU 24. Thousands of talented singers continue to audition for each new season of
AMERICAN IDOL®. Fremantle tracks the number of singers auditioning each season, and this data is compiled, reviewed and relied on by Fremantle’s creative executives in making business decisions pertaining to AMERICAN IDOL®. Each year, Fremantle launches an AMERICAN
IDOL® bus tour to cities throughout the United States to begin the audition process, which is followed by local showcases, social media auditions, and judge sittings, which are performances in front of the AMERICAN IDOL® judges. Singers auditioning for AMERICAN IDOL® who make it past the initial screening by our judges go on to perform and compete during
AMERICAN IDOL® Hollywood week, which is an assortment of group and individual competitions of these talented singers organized by musical genre and performed in front of a live band. Those who survive this round then appear in our Showcase round, where the top performers perform in front of our judges and the live studio and television audiences, whose voting determines which singers advance to the final rounds of the competition. Fremantle carefully tracks everyone who registers to audition for AMERICAN IDOL® via our auditions portal at https://abc.com/shows/american-idol/auditions. Our records show that 45,874 contestants auditioned for AMERICAN IDOL® during the 2018 season, 51,794 contestants auditioned during the 2019 season, and 51,206 contestants auditioned during the 2020 season.
25. This year, due to the COVID-19 pandemic, the audition process has been different, but still very successful. AMERICAN IDOL® became the first show to strike a deal with video conferencing company ZOOM for our own AMERICAN IDOL® ZOOM portal so that auditions can be safely held without in-person contact. So far, 22,114 auditions have already taken place for the upcoming fourth season on ABC, and auditions remain open. We are expecting many more auditions.
TESTIMONY DECLARATION OF TIM GRAU AMERICAN IDOL® Restaurant, Food and Beverage Co-Promotions
26. Throughout its eighteen-season history, AMERICAN IDOL® has engaged in numerous co-promotion and sponsorship campaigns with various national food, beverage and restaurant brands. For Season 5, in 2007, AMERICAN IDOL® engaged in a national off-air promotion with McDONALD’S® and launched the official AMERICAN IDOL® HAPPY
MEAL® line, which coincided with a television commercial and print campaign as well as meet and greets with Season 5 AMERICAN IDOL® superstars at Los Angeles-area
McDONALD’S®. Also during Season 5, AMERICAN IDOL® partnered with OSCAR
MAYER® for a national off-air promotion featuring commercials, a “sing the jingle” game, and
AMERICAN IDOL® branding on packages of OSCAR MAYER® wieners and on the OSCAR
MAYER® wiener-mobile. AMERICAN IDOL® is well-known for its thirteen season partnership with COCA-COLA®, which was our exclusive beverage partner during that time.
This co-promotion featured COCA-COLA® branded judges’ cups, a COKE® Chat Room, and
AMERICAN IDOL®-branded COCA-COLA® products at retail. Numerous third party media outlets have covered the AMERICAN IDOL®/COCA-COLA® partnership over the years, such as https://adage.com/article/media/coke-s-american-idol-deal-transformed-tv- advertising/296309. In 2010, during Season 9, COCA-COLA® and AMERICAN IDOL® partnered with DOMINOS® and T.G.I. FRIDAYS® restaurants. DOMINOS® used an
AMERICAN IDOL® sweepstakes to drive traffic to their newly-launched website and new pizza recipe, and T.G.I. FRIDAYS® launched a promotion to encourage customers to buy a COKE® and T.G.I. FRIDAYS® entrée to win a trip to the AMERICAN IDOL® finale. Both
DOMINOS® pizza boxes and its website, and the T.G.I. FRIDAYS® website, featured
AMERICAN IDOL® graphics and branding during these co-promotions. In 2007, AMERICAN
TESTIMONY DECLARATION OF TIM GRAU IDOL® launched a national partnership that included AMERICAN IDOL®-branded
PRINGLES® cans, an AMERICAN IDOL®-themed PRINGLES® TV spot and other activations, including three separate national sweepstakes. In 2008, AMERICAN IDOL®,
PRINGLES® and FORD® partnered to give away brand new FORD® vehicles as part of an
AMERICAN IDOL® co-promotion. More recently, in 2019 and 2020, AMERICAN IDOL® partnered with LIPTON® in a campaign that included in-show integrations, LIPTON®-branded judges’ cups, social media activations and a LIPTON® sampling station at the AMERICAN
IDOL® Hometown Parade, which is where a certain number of remaining contestants return to their hometown to visit important people in their life and participate in a public performance, usually occurring during the second to last episode of a season. Attached hereto as Exhibit I is a deck prepared internally at Fremantle in the regular course of conducting our AMERICAN
IDOL® business. It is the regular practice at Fremantle for members of the AMERICAN
IDOL® team to rely on the information contained in this document, which memorializes these many co-branded campaigns with our national restaurant, food and beverage partners over
AMERICAN IDOL®’s 18 season run.
Awareness of AMERICAN IDOL®
27. All of this advertising, promotion and exposure to the AMERICAN IDOL® mark has added to the enormous public awareness of the AMERICAN IDOL® mark and brand. As shown in a March 2020 internal brand awareness study, aided awareness of the AMERICAN
IDOL® brand was measured at 74%, which is considered to be an extremely high percentage of brand awareness.
AMERICAN IDOL® USPTO Registrations
TESTIMONY DECLARATION OF TIM GRAU 28. Fremantle owns Registration No. 2715725 for the trademark AMERICAN
IDOL® and Design for “Entertainment services in the nature of a continuing television talent show.” Fremantle’s exclusive rights in Reg. No. 2715725 are incontestable as shown by the records of the U.S. Patent and Trademark Office. Attached hereto as Exhibit J is a true and correct copy of this registration.
29. Fremantle owns Registration Nos. 2751431 and 4150276 for the trademark
AMERICAN IDOL® for “Entertainment services in the nature of a continuing television talent show” and “Entertainment in the nature of live stage shows,” respectively. Fremantle’s exclusive rights in Reg. Nos. 2751431 and 4150276 are incontestable as shown by the records of the U.S. Patent and Trademark Office. Attached hereto as Exhibit K are true and correct copies of these registrations.
30. Fremantle owns Registration No. 3352837 for the trademark IDOL® for
“Entertainment services in the nature of a continuing television talent show.” Fremantle’s exclusive rights in Reg. No. 3352837 are incontestable as shown by the records of the U.S.
Patent and Trademark Office. Attached hereto as Exhibit L is a true and correct copy of this registration.
31. The AMERICAN IDOL® mark appears prominently on every new and repeat broadcast of the AMERICAN IDOL® television series and is prominently displayed on stage at all AMERICAN IDOL® live stage shows. The AMERICAN IDOL® mark is always displayed prominently throughout the television studios, sets and performance venues where AMERICAN
IDOL® live events and tapings are held, and in marketing materials used in connection with and to promote the AMERICAN IDOL® television series and live stage shows.
TESTIMONY DECLARATION OF TIM GRAU
Exhibit A CONFIDENTIAL – FILED UNDER SEAL Exhibit B CONFIDENTIAL – FILED UNDER SEAL Exhibit C CONFIDENTIAL – FILED UNDER SEAL Exhibit D CONFIDENTIAL – FILED UNDER SEAL Exhibit E CONFIDENTIAL – FILED UNDER SEAL Exhibit F CONFIDENTIAL – FILED UNDER SEAL Exhibit G CONFIDENTIAL – FILED UNDER SEAL Exhibit H )01$ Exhibit I CONFIDENTIAL – FILED UNDER SEAL Exhibit J
Exhibit K
Exhibit L
CERTIFICATE OF SERVICE
I hereby certify that on September 21, 2020, a true and correct copy of the foregoing TESTIMONY DECLARATION OF TIM GRAU was served by email to Applicant’s counsel at the following email address:
BRUCE E COLFIN BRUCE COLFIN LAW PC [email protected]
Dated: September 21, 2020 /s/ Allison Rozzen______Allison Rozzen