Thursday, September 12, 2019

Single Book Title Fails to Function as a Trademark, Says TTAB

The Board affirmed a refusal to register THE NEUROTIC PARENT’S GUIDE (in standard characters, with GUIDE disclaimed), finding that it fails to function as a trademark for "Publications, namely, books on the subjects of colleges and college admissions." Rejecting a recent non-precedential Board decision [TTABlogged here] indicating that a single book title is merely descriptive and therefore eligible for registration via Section 2(f), the Board stated: "The title of a single work is ... unregistrable even if an applicant submits proof of acquired distinctiveness." In re Rothman, Serial No. 85945757 (September 10, 2019) [not precedential] (Opinion by Judge David K. Heasley).

The TTAB has (almost always) followed the principle laid down by the CAFC in Herbko v. Kappa Books that the title of a single work is not registrable as a trademark. "The policy behind this is clear. Because a trademark can endure for as long as the trademark is used, at the point that copyright protection ends, others have the right to use the underlying work, they must also have the right to call it by its name."

Although the title of a single work is unregistrable, the name for a series of works is eligible for registration because it functions as a trademark: it indicates that each work in the series comes from the same source. Examples are THE MAGIC SCHOOL BUS, ENCYCLOPEDIA BROWN, HARDY BOYS ADVENTURES, and NANCY DREW.

Applicant Judith Rothman argued that her book and her blog, The Neurotic Parent, constitute a series of works and therefore the proposed mark is registrable. Examining Attorney Amy E. Thomas maintained that, to be a series, the works must be in the same medium. The Board disagreed: "[t]he issue is not whether the creative works appear in the same medium; it is whether they would tend to be associated with a single source in the mind of the relevant public."

The problem here "lies with the titles and the contents of the blog and book." (emphasis by the Board). The mark THE MAGIC SCHOOL BUS was followed by additional words on each different work: for example, THE MAGIC SCHOOL BUS above the phrase AT THE WATERWORKS in smaller type. Thus the words THE MAGIC SCHOOL BUS created a separate impression from the complete title.

Here, Applicant Rothman is not seeking to register the common characteristic in the titles. She seeks to register the title of the book THE NEUROTIC PARENT'S GUIDE.

The book title, as shown in Applicant’s specimen of use, does not prominently display the words THE NEUROTIC PARENT in a way that would make a commercial impression separate and apart from THE NEUROTIC PARENT’S GUIDE. That is the opposite of the holding in the THE MAGIC SCHOOL BUS case.

With regard to contents, the Board noted that in the SCHOOL BUS series, each book varied in content: e.g., a trip to a cloud or to the center of the earth. "Those variations in content are important in establishing a series. If the content were the same, albeit in different formats, the work would be considered a single creative work, not a series."

As to Rothman's book and blog, she contended that although both concerned colleges and college admissions, the book includes some blog posts but also additional, unpublished creative content. However, she failed to provide evidence to support that contention, and so the Board was unable to find that the book and blog constitute a series."

Conclusion: "While it is possible for titles of creative works in different media to form a series, the evidence of record in this case does not show that the applied-for mark is the title of the claimed series, or that the content of the creative works differs sufficiently to create a series."

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: What's next for Ms. Rothman? File a new application for "a series of works ..." and submit more evidence? Could she add evidence in an appeal by way of civil action?

Text Copyright John L. Welch 2019.


At 10:41 AM, Blogger Unknown said...

I agree with the TTAB decision. As for the applicant, could she divide and conquer by serializing the work? That is, reconfigure the work as a series of "booklets" with the cover title and each chapter of the original work as a subtitle on the cover of the booklet following the Magic School Bus approach. And how did Magic School Bus convince the USPTO it established a "series" with its first title filing? File the application only after two (or more) titles produced to serve as specimens? ITU?


Post a Comment

<< Home