Wednesday, February 09, 2011

Precedential No. 4: TTAB Finds That "NKJV" Has Acquired Distinctiveness for Bibles

Reversing a refusal to register the mark NKJV for bibles, the Board found that, in light of Applicant's long use, substantial sales and advertising, and ownership of two incontestable 2(f) registrations for marks that include the term NKJV, the mark had acquired distinctiveness. In re Thomas Nelson, Inc., 97 USPQ2d 1712 (TTAB 2011) [precedential].

Mere Descriptiveness: The Board observed that, for NKJV to be merely descriptive of bibles, the evidence must show that (1) NKJV is an abbreviation for “New King James Version”; (2) “New King James Version” is merely descriptive of bibles; and (3) a relevant consumer viewing NKJV in connection with bibles would recognize it as an abbreviation of the term “New King James Version.”

First, the Board concluded that NKJV is an abbreviation for New King James Version, based on and other website evidence, on the use of various acronyms or initials for various version of the Bible, and on Applicant's own registered mark NKJV NEW KING JAMES VERSION, which suggests that NKJV is an acronym for NEW KING JAMES VERSION.

Next, based on dictionary definitions and website evidence, the Board found that NEW KING JAMES VERSION is descriptive of a particular version of the Bible.

Finally, the website evidence demonstrated that "consumers viewing the term NKJV used in connection with bibles would recognize that term as an abbreviation for 'New King James Version.'"

The Board suggested that Applicant and the Examining Attorney should have resolved this issue without the need for an appeal.

Acquired Distinctiveness: The Board was also not happy with the Examining Attorney's refusal to accept Applicant's 2(f) claim:

In view of the evidence of acquired distinctiveness submitted by applicant (i.e., substantially exclusive and continuous use over a long period of time, substantial sales and advertising expenditures) as well as applicant’s two previously registered marks, to hold that the initials NKJV has not acquired distinctiveness when the same term is the subject of two incontestable registrations under the provisions of Section 2(f) appears illogical on its face. Thus, under the facts before us, we find that the evidence of record is sufficient to support the finding that the mark NKJV mark used in connection with bibles has acquired distinctiveness.

And so the Board reversed the refusal, finding that the mark has acquired distinctiveness under Section 2(f).

Text Copyright John L. Welch 2011.


At 9:28 AM, Blogger Gauche said...

I wonder why this application wasn't refused as the title of a single creative work. When the Applicant's copyright on the New King James Version expires, what will competing publishers call it other than "New King James Version" or "NKJV"?

At 10:51 AM, Blogger Robert said...

Thomas Nelson uses NKJV on a series of titles related to the Bible. Bibles, study Bibles, Bibles with concordances, devotionals, inspirationals, books devoted to key books of the Bible, commentaries. The list of titles is rather long, and Thomas Nelson has built a rather successful business based on devout evangelical Christians' desire to spend money on Christian titles.

Robert P.

At 4:08 PM, Blogger Pamela Chestek said...

So troubled by using as evidence of non-trademark meaning. Who says that Acronymfinder doesn't list trademarks?;

At 7:32 PM, Anonymous Anonymous said...

The point is not whether it is listed on, but whether NKJV is listed there as an acronym of New King James Version, the latter considered merely descriptive for a certain kind of Bible. While IBM would be the acronym for International Business Machines, "International Business Machines" is not merely descriptive of things...

At 11:02 AM, Anonymous Gauche said...

Robert, I'm not convinced. Indeed, Thomas Nelson may be the exclusive source of NKJV titles, but that is a result of their rights in the copyrighted work, not trademark.

Suppose I obtained the copyright for a work of literature (let's say Catch-22). If I proceed to publish various versions and commentaries of the original work with titles like Large Print Catch-22, Annotated Catch-22, The Catch-22 Pocket Reader, Life Principles of Catch-22, and Inspirational Passages of Catch-22, would I be entitled to trademark rights in CATCH-22 that could outlast my copyright in the work by the same name?

At 10:33 AM, Blogger Robert said...

Gauche, You are assuming NKJV is incorporated in the title of the work. In some cases that is true, but Thomas Nelson also uses NKJV to identify a series of works.

Under TMEP 1202.08(d), a portion of a title may be registered as a trademark if it (1) creates a separate impression from the title, (2) is used on a series of works, and (3) is promoted as a mark on a series. I would agree that your Catch-22 example probably fails this test.

However, Thomas Nelson is not simply producing a series of NKJV titles with minor variations of the copyrighted content. Here NKJV simply refers to the translation used as the works' foundation. Different translations of the Bible can have some significant differences, and so a student or the faithful must know the translation used. (The Latin Vulgate Bible would not be the Bible of choice for an evangelical Christian.)

While the series of works may use the same translation, they will have significant amounts of original content not found in the text of the NKJV itself. Study Bibles for example contain maps, commentaries, histories, study notes, and references to the text in the original Greek or Hebrew. In fact, they are often identified by author such as the Matthew Henry Study Bible or the Scofield Study Bible. Devotionals are collections of prayers and would have a significant additional material. So we have a series of titles.

Thomas Nelson also does not always include NKJV in the work's title. It will place NKJV at the bottom of the cover or the title page. This creates physical separation from the title, helping to establish independent significance of NKJV.

It does engage in efforts to promote its NKJV line.

Finally, Thomas Nelson owns Registration No. 2514142 NKJV and Registration No. 2501485 NKJV NEW KING JAMES VERSION. So it appears that it has satisfied the PTO that NKJV is not a single creative title.


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