In 2014, the Trademark Trial and Appeal Board (“TTAB or the “Board”) issued a decision (not precedential) wherein it declared that the proper basis for refusing a mark that is a title of a single creative work is Section 2(e)(1) of the Trademark Act and not sections 1, 2 & 45 of the Lanham Act. See our blog post entitled, The TTAB’s Recent Decision Clears A Path For Titles Of Single Works, where we discuss the matter, In re King Productions, Inc., Serial No. 76703458 (November 19, 2014)[not precedential]. In re King Productions, Inc., opened the door for the Board to abandon its previous position that any single title to a creative work, such as a book, movie or play would not be able to function as a trademark and therefore not be able to register on the Principal Register or the Supplemental Register. See Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§ 1051, 1052, and 1127.
The Federal Circuit Court of Appeals (“CAFC”) has affirmed the position that single titles of works cannot act as source indicators. See Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002). The Board had issued consistent decisions such as, In re Arnold, 105 USPQ2d 1953, 1954 (TTAB 2013) (“It is well settled that the title of a single creative work is not considered a trademark and is, therefore, unregistrable….”), until late 2014. Consistency broke in 2014, with the Board’s In re King Productions, Inc., decision that stated single titles are descriptive marks that may be able to acquire secondary meaning. However, the latest Board decision makes it clear that single creative titles cannot acquire distinctiveness. See In re Rothman, Serial No. 85945757 (September 10, 2019) [not precedential].
The applicant in In re Rothman, was seeking to register the mark, THE NEUROTIC PARENT’S GUIDE, in standard characters, for books on colleges and college admissions. Applicant’s mark was refused on the traditional grounds that the mark was a title to a single creative work. Applicant asserted that in addition to the book shown in the specimen the mark has been used on her blog in connection with colleges and the admissions process since 2008. The applicant argued that the blog although it is in a different medium would constitute use for a series. The Examining Attorney argued that to qualify as a series, the works must be in the same medium. Applicant, then made an argument in the alternative that the mark had acquired distinctiveness over the course of eleven years of use. The Examining Attorney made the refusal final and applicant appealed.