Wednesday, April 15, 2009

TTAB Affirms Single Creative Work and Mutilation Refusals of "CHOOSE TO BE RICH"

The application of Cashflow Technologies, Inc. to register the mark CHOOSE TO BE RICH for audio tapes featuring financial educational information, turned out to be a poor candidate for registration. The Board chose to affirm the PTO's refusals to register, finding that the phrase constitutes the title of a single creative work (and is thus unregistrable), and that it comprises a mutilation of the mark that appears on the specimens of use. In re Cashflow Technologies, Inc., Serial No 78965495 (March 26, 2009) [not precedential].

Single Creative Work: Under well-established law, the title of a single creative work cannot serve as a trademark. Cashflow argued, however, that the "content of each of [its] respective tapes is clearly different (e.g., like different books rather than different chapters of the same book) and therefore, [its specimen of use] is acceptable to show use of the mark on a series of creative works."

Examining Attorney Linda Lavache pointed out that Cashflow is selling several cassette tapes as a single work: one of its specimens displays six tapes in a cassette notebook. She submitted evidence showing that audio versions of books "are often sold in cassette form with multiple cassettes for practical reasons."

[A]pplicant apparently could have sold its cassettes individually but it did not. Applicant instead sells its YOU CAN CHOOSE TO BE RICH cassettes as a single work as if the cassettes were chapters of a book.

A book equals a single work. Ergo, the Board affirmed this refusal.

Mutilation: Under Rule 2.51(a), the mark shown on the application drawing must be a "substantially exact representation of the mark as used on or in connection with the goods and/or services." The question of whether a mark is a mutilation "boils down to a judgment as to whether that designation for which registration is sought comprises a separate and distinct 'trademark' in and of itself."

The Board looked to the "eye-dropper" case, in which an attempt to register the dropper by itself, apart from the watering can, was considered a mutilation of the mark. It also noted the recent "Upper 90" decision, in which mutilation was found because the specimen of use included a "degree symbol" that was missing on the application drawing (TTABlogged here).

Here, the Board observed that the words YOU CAN are intertwined with the letter "C" in CHOOSE TO BE RICH. "Indeed, the letter 'C' in 'Can' forms part of the letter 'C' in Choose." Moreover, the Board noted, the words "You," "Can," and "Choose" appear as in an English sentence. "These features support the argument that the mark would be viewed as YOU CAN CHOOSE TO BE RICH."

Finally, the Board asserted that the meaning of the two sentences CHOOSE TO BE RICH and YOU CAN CHOOSE TO BE RICH are not necessarily the same.

We conclude that the mark sought to be registered does not create a separate and distinct commercial impression from the other material on the specimen. Therefore, applicant's mark is not a substantially exact representation of the mark shown on the specimen.

And so, the Board affirmed the mutilation refusal.

TTABlog comment: Well, I think the Board got it half right. It strikes me that CHOOSE TO BE RICH does create its own commercial impression. That phrase is much larger than the words YOU CAN. Moreover, I don't agree that the "C" in Can "forms part of the letter 'C' in CHOOSE." The letter "C" in CHOOSE is readily recognizable with or without that small "C."

Text Copyright John L. Welch 2009.


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