Tuesday, April 19, 2016

Divided Board Panel Affirms Single-Book-Title Refusal of NO EXCUSES DIET

A divided panel of the Board affirmed a refusal to register the mark NO EXCUSES DIET for "books in the field of food in health and wellness," on the ground that the phrase does not function as a trademark because it is merely the title of a single book. Judge Adlin dissented, finding that as a result of applicant's "association creating activities under the marks NO EXCUSES and THE NO EXCUSES DIET," these marks identify a set of literary and other works on the same subject." In re Jonathan Roche Fitness Ventures LLC, Serial No. 85981686 (April 15, 2015) [nor precedential].

Judge Kuczma, writing for the panel majority, observed that the title of a single book "describes the book, and is not associated in the public mind with the publisher, printer of bookseller." However, if the title identifies a series of works, it performs a trademark function and is registrable.

Reviewing applicant's specimen of use and its submitted evidence, the majority found it clear the proposed mark "only identifies the title of a single book." The additional evidence submitted by applicant comprised advertising for materials in its book, including workouts, articles and other items available at applicant's website or on YouTube, made available on the same webpage that offers the book. That use, the majority found, does not constitute use of NO EXCUSES DIET as a trademark for books (though it may be service mark use).

Given the identification of goods - i.e., books - the panel majority affirmed the refusal.

Dissent: Judge Adlin called the majority's conception of "book," "titles," and "series" as too narrow. He would find that THE NO EXCUSES DIET (sic!) is associated in the public mind with the book's source. It is not required that the works in a series all be in the same format, or that the marks be used without any variation.

Although applicant offers only one book under the title NO EXCUSES DIET, that is not its only use of the mark (or closely related marks). The ancillary materials referencing the book, in combination, form a "system or process to 'crank up your energy fitness and weight loss.'" The evidence supports a finding that NO EXCUSES is in fact applicant's "primary mark" (DIET being disclaimed).

Judge Adlin concluded that applicant is engaged in a number of "association creating activities" under the marks NO EXCUSES and THE NO EXCUSES DIET, and as a result "those marks identify a set of works on the same subject, namely, nutrition, health and wellness."

Read comments and post your comment here.

TTABlog comment: Perhaps applicant should have identified the goods as printed publications rather than books.

Text Copyright John L. Welch 2016.


At 9:59 AM, Anonymous Anonymous said...

I have often thought that denying trademark registrations to book titles is quite an artificial contrivance. "Gone with the Wind" is suggestive of the story in that Civil War book, not merely descriptive. And the fact that it only applies to one novel should not be dispositive; millions of copies have been sold, just like millions of copies of Ivory soap have been sold.

My guess is that the PTO just does not want to be swamped all the work that they would have if every author chose to register his/her/its title as a trademark.

At 10:21 AM, Anonymous Anonymous said...

I never understood the rationale for the single book refusal. So, what if there's just one book - the title either identifies source or it doesn't. They don't refuse to register a trademark for frozen pizza because it only identifies one good.

At 12:49 PM, Anonymous Anonymous said...

If trademark rights are granted over a single book title, what happens when the book's copyright expires? If the trademark in the book is still active upon expiration of the copyright, does this thwart the public's bargain in granting copyrights in the first place?

At 1:33 PM, Anonymous Anonymous said...

Trademarks are about source identifying (less so about property ownership). This is one reason why the single book rule makes sense. One single book is always the same; it has the same text, characters, themes. But while pizza is still pizza, you don't know if the future copies of that pizza have the same quality cheese and pepperoni. I'm hungry.

At 2:47 PM, Anonymous Anonymous said...

The USPTO would never have accepted "printed publications" as an ID in an approved application because it is too broad but the applicant should probably have included in its application its website information services; videos; and the various different types of printed publications it offers (listed after a "namely...").

At 9:47 AM, Anonymous Anonymous said...

I am the first anonymous poster above.

To anonymous worrying about copyright registration expiration, the same issue applies to patent expiration and there is a body of case law dealing with it that the copyright/trademark bar can learn from.

To anonymous dealing with pizza having changing cheese and pepperoni, that argument seems slippery. All kinds of goods are made and protected by trademarks and their owners go to great lengths to assure quality maintenance (i.e. make sure the cheese and pepperoni don't depart from the quality standard) and in the licensing arena, the requirement for quality control makes that a critical element to maintaining a trademark and no abandoning it by naked licensing.

At 8:16 PM, Anonymous Anonymous said...

To anon at 9:47....I think you are making my point about the quality control issues. Quality control exists with pizza, since the amount and type of cheese can vary. It doesn't exist with a single book. The book is always the same. That's why you can get a trademark for pizza, but not a single book. For the pizza, the trademark serves its purpose of identifying a source of a specific quality. There is no similar purpose for a single book.

At 1:43 PM, Anonymous Anonymous said...

Anonymous at 8:16, first anonymous poster again. I beg to differ.

The book title identifies the source of the content of book, whether it is a novel with a consistent character development and plot or a non-fiction book with a consistent rendition of its factual or opinion content.

The ingredients of a pizza are not the ingredients of a book, nor the ingredients of an automobile. What kind of things go into the product or service is really immaterial to the question of whether the purported trademark indicates source. The kind of ingredients may vary from one good to another, but the function of a trademark of indicating the source of those ingredients and the way they are put together does not.


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