Precedential No. 36: TTAB Enters Summary Judgment Cancelling Trademark Registration for the Title of a Single Creative Work
The Board granted Petitioner Mattel's motion for summary judgment in this cancellation proceeding involving the registered mark LAUGH & LEARN in the design form shown below, on the ground that the phrase is merely the title of a single creative work and therefore unregistrable as a trademark. Respondent Brainy Baby sold both a VHS tape and a DVD under that title, but the Board found that they featured essentially the same content, and some additional content on the DVD was insufficient to show that the VHS and DVD versions constitute a series of works. Mattel, Inc. v. The Brainy Baby Company, LLC, 101 USPQ2d 1140 (TTAB 2011) [precedential].
The title of a single creative work is not considered a trademark, and is therefore not registrable on the Principal Register. "The policy for this is clear. Because a trademark can endure for as long as the trademark is used, at the point that copyright protection ends and others have the right to use the underlying work, they must also have the right to call it by its name."
The title is merely descriptive of the single work and does not function as a trademark. However, if a term is used to identify the source of a series of works, then the term is registrable, even though it may be included in the title of each work in the series.
Here, in the challenged registration the goods are identified as a "series of prerecorded videotapes, audio cassettes, digital video discs and compact discs featuring live and animated educational materials intended to develop and improve the creative and intellectual faculties of infants and children." The issue before the Board was whether respondent was using the mark for a series at the time it filed its application.
Respondent had sold, at the time it filed its application, a VHS tape and a DVD using LAUGH & LEARN as the title of each. The VHS tape and the DVD contained the same "featured program" consisting of "forty-five minutes of elementary learning concepts geared toward toddlers." The DVD, however, includes some additional features: a "scene selection" menu and an "Extras" menu providing information on the making of the Respondent's videos, outtakes, previews of other works, and a DVD-Rom Activities page that provides a website link when the disk is inserted in a computer.
The Board found no genuine dispute that "the additional content on the DVD is insufficient to show that the VHS and DVD versions are a series."
The featured program on both the VHS tape and the DVD are the same creative work, and the addition of the minor enhancements in the DVD does not transform this single work into a series, any more than the variations in a live performance that occur from night to night transform the title of a single production into a series.
Moreover, the LAUGH & LEARN program is promoted in Respondent’s catalogs as a single work available in both VHS and DVD formats. The Board concluded that "consumers will understand that the DVD version, even with the enhancements, is merely the same work as appears on the VHS tape, both of which have the title LAUGH & LEARN, rather than regarding the DVD as another item in a series bearing the mark LAUGH & LEARN."
And so the Board granted the motion for summary judgment.
TTABlog comment: If the policy for the single-work rule is that others must have the right to use the title when the copyright in the work expires, doesn't that same policy apply to a series of works when they go out of copyright? The Board noted that, in a series, each work has its own individual title, and so "a series name is comparable to the title of a periodical publication such as a magazine or newspaper."
Suppose the DVD were title "Enhanced LAUGH & LEARN," or "LAUGH & LEARN version 2.0"? Would that help avoid this result?
Suppose one title in a series goes out of copyright. May one sell copies of that one work, under its original title, but using the "series" mark only descriptively: e.g., "Fred Builds a Castle," a book in the series "STORIES OF FRED" originally published by ABC Publishing Company? Or something like that?
Text Copyright John L. Welch 2011.