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 In re King Productions, Inc., Serial No. 76703458 (November 19, 2014) [not precedential].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).
Read comments and post your comment here
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.
posted by John L. Welch @ 11/21/2014
4 comments
4 Comments:
This is a shocking decision. The title-of-a-single-creative-work refusal is a mess and largely incoherent, and I for one would agree with the Board's decision IF it were writing on a blank slate. But it's not.
The Board acknowledges that for 55 years "[t]his Board and the Federal Circuit have affirmed the refusals made under Sections 1, 2 and 45 of the Trademark Act" but that "[w]e have undertaken a thorough review of the case law and the underlying principles for refusing registration of titles, and have reached the conclusion that the refusal to register a title of a single work should be based on Section 2(e)(1) rather than Sections 1, 2 and 45." The Board then goes on to look at evidence of acquired distinctiveness and finds that Applicant's 884 sales "is insufficient for us to find that consumers would view ROCK YOUR BODY as a trademark for [Applicant's goods], rather than just as the title of a single creative work."
How does the Board square its new view with the Federal Circuit's decision in Herbko, where the Board's primary reviewing court stated, "[T]he publication of a single book cannot create, as a matter of law, an association between the book's title (the alleged mark) and the source of the book . . . . As indicated above, [petitioner's sales of over a million copies] are insufficient to form the needed association. Even sales of a large number of copies of a single work cannot create a source identifying association in the public mind unless this court abandons its precedent that a single work cannot serve as a source identifier. . . . In sum, this court's case law prohibits proprietary rights for single book titles." Herbko, 64 U.S.P.Q.2d 1378-80.
Also, why would the Board announce its new view on this subject in a non-precedential decision? Weird.
This decision seems unfair to Applicant. In response to the question in your "note" - both the Applicant AND the Examiner were unaware that the basis for the refusal would be 2(e)(1) rather than a failure to function. And rightfully so since the USPTO has treated a title of a single work as an absolute bar (not a source identifier). With its decision here, the Board changed the basis for refusal to a descriptiveness issue. Now, a title of a single work is capable of functioning as a source identifier with acquired distinctiveness. "We have undertaken a thorough review of the case law and the underlying principles for refusing registration of titles, and have reached the conclusion that the refusal to register a title of a single work should be based on Section 2(e)(1) rather than on Sections 1, 2 and 45."
The Board then goes on to state:
"Although the issue of acquired distinctiveness under Section 2(f) was not specifically discussed during prosecution of this application, it is clear that one way to overcome a Section 1, 2 and 45 refusal."
This was NOT "clear" with respect to registering titles of a single work at the USPTO. A 2(e)(1) refusal informs Applicants of the option to overcome the refusal with a claim of acquired distinctiveness or Supplemental Reg., etc. That did not happen here. The Board changed the rules during its decision, raised a new issue and the Applicant should be given an opportunity to respond accordingly.
And why isn't this decision precedential?
This decision seems unfair to Applicant. In response to the question in your "note" - both the Applicant AND the Examiner were unaware that the basis for the refusal would be 2(e)(1) rather than a failure to function. And rightfully so since the USPTO has treated a title of a single work as an absolute bar (not a source identifier). With its decision here, the Board changed the basis for refusal to a descriptiveness issue. Now, a title of a single work is capable of functioning as a source identifier with acquired distinctiveness. "We have undertaken a thorough review of the case law and the underlying principles for refusing registration of titles, and have reached the conclusion that the refusal to register a title of a single work should be based on Section 2(e)(1) rather than on Sections 1, 2 and 45."
The Board then goes on to state:
"Although the issue of acquired distinctiveness under Section 2(f) was not specifically discussed during prosecution of this application, it is clear that one way to overcome a Section 1, 2 and 45 refusal is to submit evidence that the proposed mark functions as a mark because it has acquired distinctiveness as a mark."
This was NOT "clear" with respect to registering titles of a single work at the USPTO. A 2(e)(1) refusal informs Applicants of the option to overcome the refusal with a claim of acquired distinctiveness or Supplemental Reg., etc. That did not happen here. The Board changed the rules during its decision, raised a new issue and the Applicant should be given an opportunity to respond accordingly.
And why isn't this decision precedential?
In this case, the applicant did not rely upon the book title as the use of the mark. It relied upon the point of sale display. The mark is both the book title and then name of the applicant's publishing company. If the applicant had filed for the mark ROCK YOUR BODY PRESS for books and used a point of sale display would that not be a valid mark?
Post a Comment
<< Home