Friday, October 31, 2008

TTAB Finds "Tick, Tick ... Boom!" to be the Title of a Single Work, Affirms Refusal to Register

Agreeing with Examining Attorney Natalie Polzer, the Board affirmed a refusal to register the mark TICK, TICK ... BOOM! for musical recordings, entertainment services in the nature of a musical play, and songbooks and sheet music, finding the mark to be the title of a single work and therefore unregistrable. In re Skeeziks, LLC, Serial No. 78435362 (September 26, 2008) [not precedential].

The law is clear that the title of a single work is not registrable, and this rule applies to musical recording, printed publications, and live theatrical productions. Applicant argued that its purported mark "is not the title of a single work and that the mark identifies a series of distinct creative works."

In support of its argument, Applicant submitted copies of two copyright registrations for "two substantial [sic] distinct plays with Applicant's mark as the title." According to Applicant, "since copyright law is applicable to the determination of whether works are both creative and distinctive, ... [the] copyright registrations are probative and substantially demonstrate that Applicant has used its mark as the title of at least two distinct creative works."

The Board gave Applicant's argument a bad review. First, it noted that "copyright registrations are not evidence of use of the term in commerce." Second, it was not convinced that "the determination under copyright law that a work is a derivative work is the equivalent of a series for purposes of trademark registration."

The Examining Attorney maintained that "applicant's copyright registrations point to the fact that the applicant's play has undergone creative adaptations as part of the creative process but remains a single musical play entitled Tick, Tick ... Boom!"

The Board agreed, concluding that the second copyright registration "does not evince a series of plays," but rather indicates merely that some material was added to the original as part of the overall creative process.

Moreover, the Copyright Act's definition of a derivative work supports the Examining Attorney's position, as does TMEP Section 1202.08(c), which states that a series "is not established when only the format of the work is changed and use of the title on unabridged and abridged versions of the same work does not establish a series."

The Board therefore affirmed the refusal to register.

Text Copyright John L. Welch 2008.


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