New York Trademark Attorney Blog
At the end of 2014, the Trademark Trial and Appeal Board (the “Board” or “TTAB”) issued a surprising decision (albeit non-precedential), finally questioning the rule that bars all titles of single creative works from receiving federal trademark registration. See In re King Productions, Inc. Serial No. 76703458 (November 19, 2014) [not precedential]. King Productions, Inc. (“Applicant”) was seeking registration of the phrase, ROCK YOUR BODY on the principal register for DVDS and books in the fields of dance, exercise and fitness. The Examining Attorney refused registration on the basis that the term did not function as a trademark under Sections 1, 2, & 45 of the Trademark Act. The Examiner stated that the specimens of record showed that the proposed mark was merely the title of a single creative work (the title of a book and a DVD). When the refusal was made final the Applicant appealed to the TTAB.
For decades, the USPTO has held that the title of a single work such as a book, DVD, movie or play is not considered a trademark and is not capable of registration. See Herbko Int’l Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375 (Fed. Cir. 2002). Although, titles of a series of works can be registered. The reasoning for this is because a series provides a trademark function in that the series indicates that each work comes from the same source. Keep in mind that each work in the series may have its own title separate from the trademark for the series. The name of the series is not descriptive of any one work.
The Board noted that titles of single works have been refused under sections 1, 2, & 45 of the Trademark Act for some time now. However, the Board declared that the proper basis for refusal of titles of single works should be based on Section 2(e)(1) of the Trademark Act. This basis is appropriate because the title describes the work. The Board’s assertion and change of the basis for refusal of a title of a single work is significant because an applicant can now overcome the refusal by showing the mark has acquired distinctiveness under Section 2(f) of the Trademark Act. An applicant would have to show that the relevant public understands that the primary significance of the mark is to indicate or identify the source of the product or service rather than the product itself. If the public views the mark merely as a title of a single work, then it has not acquired distinctiveness or secondary meaning. Although, the Board opened the door to overcome a potential refusal under Section 2(e)(1), the applicant will have a difficult challenge to produce evidence of secondary meaning.
The Board then continued to examine whether ROCK YOUR BODY had acquired distinctiveness as a trademark. The general rule is that the applicant has the burden to establish a prima facie case of acquired distinctiveness. In addition, the more descriptive a mark, the higher the burden will be to show secondary meaning. See In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005). In this case, the title of a single creative work is considered highly descriptive. To prove acquired distinctiveness, the applicant should introduce evidence of length of use of the mark, advertising expenditures, sales, survey evidence, and affidavits showing how consumers understand the mark to have source identifying recognition.
Here, the Applicant produced evidence that there were 884 sales of his book & DVD made directly through his website. He also introduced evidence that he owned a trademark registration for ROCK YOUR BODY for clothing, dance & choreography workshops, and special event production services. The Board pointed out that there was no evidence of public exposure to the website where he promoted his goods and services. The only evidence consisted of the 884 sales that at best meant that there were 884 users of the site. However, it would have been more persuasive, if we knew the number of hits or visitors of the website over a specified period of time.
In the end, the Applicant’s evidence was insufficient to show that consumers would recognize ROCK YOUR BODY as a trademark for the book and DVD. The Board affirmed the refusal to register the mark in both international classifications. Consulting with trademark counsel before submitting an application for a title to a single work or series would be wise. In appropriate cases using an author’s name as a trademark to identify the works may be a good alternative. If you have questions regarding this blog post or other trademark inquiries, please do not hesitate to contact our office for a courtesy consultation.