TTAB Determines Titles Of Single Creative Works Cannot Acquire Distinctiveness

In 2014, the Trademark Trial and Appeal Board (“TTAB or the “Board”) issued a decision (not precedential) wherein it declared that the proper basis for refusing a mark that is a title of a single creative work is Section 2(e)(1) of the Trademark Act and not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Of Single Works, where we discuss the matter, In re King Productions, Inc., Serial No. 76703458 (November 19, 2014)[not precedential].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 See In re Rothman, Serial No. 85945757 (September 10, 2019) [not precedential].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.

The Board declared it would follow long standing precedent and find that case law prohibits proprietary rights in a title for a single creative work, reiterating that it cannot be registered on the Principal or Supplemental Register. Thus, a title for a single work cannot acquire distinctiveness. However, the Board pointed out the name for a series of works can function as a source indicator and thus can register. The Board rejected the Examining Attorney’s declaration that the works must be in the same medium. In fact, the Board had no problem with a printed book and an electronic blog being perceived as a series, and stated, “a series of creative works may extend into different media”. The critical question is will the relevant public perceive the two works to have a single source.

The Board took issue with the applicant’s titles (which were different) and the contents (too closely similar) of the book (The Neurotic Parent’s Guide) and blog (The Neurotic Parent). The Board emphasized that it works best when the mark is contained on each work in the series, but each work has a separate title. For example, THE MAGIC SCHOOL BUS Lost In the Solar System and THE MAGIC SCHOOL BUS Inside the Human Body. It is helpful to use the mark, THE MAGIC SCHOOL BUS in bigger font than the other wording and on a separate line. The mark, THE MAGIC SCHOOL BUS can be used in the title for each work as a part of the title, but additional wording for each work in the series is recommended. The common characteristic, THE MAGIC SCHOOL BUS can be registered as a trademark. The other important factor for a series is a variation in content. For example, in THE MAGIC SCHOOL BUS series although some characters are the same, the stories in each book are different.  The applicant in In re Rothman, did not produce sufficient evidence to show the content of the book and the blog were disparate enough. If the content is the same even though it is in different formats, it’s considered a single work. In the end, the Board agreed with the Examining Attorney that there was not enough evidence in the record to conclude that the book and blog would be perceived as a series. If you have questions regarding trademarks for creative works or other trademark questions, please contact the firm for a courtesy consultation.