Wednesday, December 19, 2012

TTAB Affirms Refusal of "THE BRAIN THAT CHANGES ITSELF" as Title of Single Creative Work

The title of a single creative work is not considered a trademark and is consequently unregistrable under Sections 1, 2, and 45 of the Trademark Act. You might say that's a no-brainer. But what if the alleged mark is used as a book title and on a website "featuring additional copyrighted materials"? Not good enough, said the Board, and so it affirmed a refusal to register THE BRAIN THAT CHANGES ITSELF for "printed materials, namely books and instructional materials on the subjects of the human brain, brain science and neuroplasticity." In re Doidge, Serial No. 77801845 (December 4, 2012) [not precedential].

Dr. Doidge's specimen of use displayed the phrase THE BRAIN THAT CHANGES ITSELF as the title of a book. He claimed that he used the alleged mark for revised versions and translations of the book, and for printed instructional materials, but he failed to submit any evidence in that regard.

Dr. Doidge also pointed to his website, purportedly providing additional materials (e.g., an "FAQs" section), but he provided no legal authority for the proposition that a website constitutes a separate creative work. The Board viewed the website content as "collateral to applicant's book."

Finally, Dr. Doidge pointed to a documentary film related to the book, but again his evidence was inadequate: there was no proof regarding the source of the film, where it appeared on television, or where it is available on DVD. There was nothing to show that the film has been shown on television or distributed on DVD in the United States. Nor was there any evidence that Dr. Doidge was the source of the documentary, rather than his book serving as the subject of the film.

In short, the record evidence demonstrated use of the alleged mark only as the title of a single creative work. Therefore the Board affirmed the refusal.

TTABlog comment: For a recent, precedential decision discussing this issue, see Mattel, Inc. v. The Brainy Baby Company, LLC, 101 USPQ2d 1140 (TTAB 2011) [precedential] (use of LAUGH & LEARN & Design as the title of a children's learning program, offered in both VHS and DVD formats, constituted a single creative work). [TTABlogged here].

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Text Copyright John L. Welch 2012.


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