Can You Now Get A Trademark Registration For The Title Of A Single Work?

Can You Now Get A Trademark Registration For The Title Of A Single Work?

February 5, 2015
by Jerry Glover

It has been a rule for over fifty years that the Trademark Office will not register a trademark for the title of a single book, single motion, picture, single DVD, single CD, etc. Even the federal appeals court that hears appeals from the Trademark Trial and Appeal Board (TTAB) has held, as late as 2002, that this is the rule. See Herbko Int’l Inc. v. Kappa Books, Inc., 308 F.3d 1156 (Fed. Cir. 2002). But late last year the TTAB seemed to change that understanding.

Among other things, the TTAB hears appeals from decisions of Trademark Office examiners who have refused registration of proposed marks. A quick review: the legal purpose of at trademark is to indicate to relevant consumers the source of that product. A trademark is not the product and if consumers believe a trademark means the product then that mark is probably generic which means it’s not a trademark at all. So, for example, every time you buy a product with the “Borden” trademark attached to it you know it comes from the same source even if you don’t know the name of that source.

In this case, King Productions, Inc. tried to register “Rock Your Body” as a single DVD and as a single book in the field of dance, exercise and fitness. The examiner refused registration claiming that the proposed mark was merely the title of a single book and a single DVD.

On appeal, the TTAB acknowledged the general rule about trademarks for single works explaining that the title of a book, DVD, etc. is treated as the name of the work and therefore it describes the work. But the TTAB also noted that the name of a series of works can be registered because that single title for series lets consumers know that each part of the series comes from the same source. For example, people know that when they buy today’s issue of The New York Times that it comes from the same source as every other daily issue.

But, having reviewed the law regarding titles and single works, the TTAB concluded that refusal to register a single title should be based on the proposition that the title is descriptive and descriptive marks, generally, cannot be registered because they are not a source indicator. But the TTAB also noted that the federal trademark act allows registration of a descriptive mark if it has “acquired distinctiveness.” To provide acquired distinctiveness, the TTAB explained that if an applicant can show the Trademark Office that the relevant consuming public understands the primary significance of a single title as identifying the source of a product rather than the product itself, then it is available for registration.

So how does an applicant prove acquired distinctiveness? The TTAB listed several things that an applicant can point to:

  1. Length of use of the mark;
  2. Advertising expenditures,
  3. Sales volume;
  4. Consumer survey evidence;
  5. Affidavits asserting source-indicating recognition.

This list is not exhaustive so there may be other evidence an applicant can use to show acquired distinctiveness. But at least there is now hope that some titles of single works may now be registered. It is predicted, however, that most applicants will be able to meet the difficult burden of proving acquired distinctiveness.

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