Title of Book Is Registrable With Acquired Distinctiveness, Says TTAB
The Board ruled that the title of a single book or a single DVD is properly refused registration under Section 2(e)(1) on the ground of mere descriptiveness, but is registrable under Section 2(f). Here, however, applicant failed to prove acquired distinctiveness, and so the Section 2(e)(1) refusal was affirmed. In re King Productions, Inc., Serial No. 76703458 (November 19, 2014) [not precedential].
The Examining Attorney refused registration under Sections 1, 2, and 45 of the Trademark Act on the ground that the title of a work fails to function as a trademark. Applicant for some reason focused on the issue of whether the specimens of use were acceptable, but that was not the basis for the refusal.
The Board observed that, although the registration of a title has often been refused registration under Sections 1, 2, and 45, the proper basis for refusal is Section 2(e)(1) because the title describes the work. A title is capable of registration if it is used for a second work (i.e., as the title of a series), and courts have protected the title of a single work once secondary meaning has been established. So a title is capable of functioning as a trademark.
Of course, a Section 2(e)(1) refusal can be overcome by a showing of acquired distinctiveness under Section 2(f). And so the question here became whether applicant's mark had acquired distinctiveness.
Applicant had a "significant burden" under Section 2(f) because a title is highly descriptive of a book or DVD. Was there "sufficient public exposure of ROCK YOUR BODY in such a manner that consumers would view ROCK YOUR BODY not merely as a title of the book and DVD, but as a trademark indicating source?"
Applicant sold only 884 sets of the book and DVD. Its website showed the mark used with apparel and workshops, which would convey to consumers that ROCK YOUR BODY plays a role beyond that of a title, but the evidence failed to show the extent of exposure of the website (e.g., the number of hits or visitors). The Board found that evidence insufficient to establish acquired distinctiveness, and so it affirmed the refusal under Section 2(e)(1).
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TTABlog note: Was the applicant aware that the Board would turn this appeal into a hunt for acquired distinctiveness?
Text Copyright John L. Welch 2014.