1202.08 Title of a Single Creative Work
The title, or a portion of a title, of a single creative work must be refused registration under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, unless the title has been used on a series of creative works. The title of a single creative work is not registrable on either the Principal or Supplemental Register. Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1162, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002) ("the title of a single book cannot serve as a source identifier"); In re Cooper, 254 F.2d 611, 615-16, 117 USPQ 396, 400 (C.C.P.A. 1958) , cert. denied, 358 U.S. 840, 119 USPQ 501 (1958) ("A book title ... identifies a specific literary work ... and is not associated in the public mind with the publisher, printer or bookseller...."); In re Posthuma, 45 USPQ2d 2011 (TTAB 1998) (holding the title of a live theater production unregistrable); In re Hal Leonard Publ'g Corp., 15 USPQ2d 1574 (TTAB 1990) (holding INSTANT KEYBOARD, as used on music instruction books, unregistrable as the title of a single work); In re Appleby, 159 USPQ 126 (TTAB 1968) (holding the title of single phonograph record, as distinguished from a series, does not function as mark).
As noted in In re Cooper, there is a compelling reason why the name or title of a book cannot be a trademark, which stems from copyright law. Unlike a copyright that has a limited term, a trademark can endure for as long as the trademark is used. Therefore, once copyright protection ends, and the work falls in the public domain, others must have the right to call the work by its name. G. & C. Merriam Co. v. Syndicate Publ’g Co., 237 U.S. 618, 622 (1915); In re Cooper, 254 F.2d at 616, 117 USPQ at 400; Mattel Inc. v. Brainy Baby Co., 101 USPQ2d 1140, 1144 (TTAB 2011). Moreover, if the work sought to be registered is not copyrighted, the public may copy it at once and would be as clearly entitled to call it by its name. In re Cooper, 254 F.2d at 616, 117 USPQ at 400.
See TMEP §1301.02(d) regarding the titles of radio and television programs.
1202.08(a) What Constitutes a Single Creative Work
Single creative works include works in which the content does not change, whether that work is in printed, recorded, or electronic form. Materials such as books, sound recordings, downloadable songs, downloadable ring tones, videocassettes, DVDs, audio CDs, and films are usually single creative works. Creative works that are serialized, i.e., the mark identifies the entire work but the work is issued in sections or chapters, are still considered single creative works. A theatrical performance is also a single creative work, because the content of the play, musical, opera, or similar production does not significantly change from one performance to another. In re Posthuma, 45 USPQ2d 2011, 2014 (TTAB 1998) . A cornerstone was considered a single creative work in an application for registration of FREEDOM STONE for "building stones used as landmarks or cornerstones," where the record showed that the proposed mark would identify only one building stone used as a landmark or cornerstone, to serve as the cornerstone for the Freedom Tower that is to be erected at the World Trade Center site in New York City. In re Innovative Cos., LLC., 88 USPQ2d 1095, 1102 (TTAB 2008) .
1202.08(b) What Does Not Constitute a Single Creative Work
Generally, any creative work will not be considered a single creative work if evidence exists that it is part of a series (e.g., the work is labeled "volume 1," "part 1," or "book 1") or is a type of work in which the content changes with each issue or performance. For example, single creative works do not include periodically issued publications, such as magazines, newsletters, comic books, comic strips, guide books, and printed classroom materials, because the content of these works changes with each issue.
A book with a second or subsequent edition in which the content changes significantly is not regarded as a single creative work. For example, a statement on the jacket cover that a cookbook is a "new and revised" version would indicate that it includes significant revisions. However, a new edition issued to correct typographical errors or that makes only minor changes is not considered to be a new work. Live performances by musical bands, television and radio series, and educational seminars are presumed to change with each presentation and, therefore, are not single creative works.
Computer software, computer games, coloring books, and activity books are not treated as single creative works.
The examining attorney must determine whether changes in content are significant based on any evidence in the application or record. The examining attorney may conduct additional research using the applicant’s website, Internet search engines, or Nexis® databases (and enter a Note to the File in the record, if appropriate). In addition, the examining attorney may issue a request for information under 37 C.F.R. §2.61(b).
1202.08(c) Complete Title of the Work – Evidence of a Series
The name of a series of books or other creative works may be registrable if it serves to identify and distinguish the source of the goods. An applicant must submit evidence that the title is used on at least two different creative works. In re Arnold, 105 USPQ2d 1953, 1956 (TTAB 2013) . A series is not established when only the format of the work is changed, that is, the same title used on a printed version of a book and a recorded version does not establish a series. See Mattel Inc. v. Brainy Baby Co., 101 USPQ2d 1140, 1143 (TTAB 2011) (finding that a program recorded on both a VHS tape and a DVD were the same creative work, and that the addition of minor enhancements in the DVD did not transform this single work into a series). Likewise, use of the title on unabridged and abridged versions of the same work, or on collateral goods such as posters, mugs, bags, or t-shirts does not establish a series. Similarly, minimal variations of the same theatrical performance do not create a series. See In re Posthuma, 45 USPQ2d 2011, 2014 (TTAB 1998) .
For example, if an application for the mark HOW TO RETIRE EARLY for "books" is refused because the specimen shows the mark used on a single creative work, the applicant may submit copies of other book covers showing use of the mark HOW TO RETIRE EARLY and any additional evidence to establish that the book is published each year with different content. It is not necessary to show that the mark was used on the other works in the series prior to the filing date of the application or the allegation of use. However, evidence that the applicant intends to use the mark on a series is insufficient.
1202.08(d) Portion of a Title of the Work
A portion of the title of any single creative work is registrable only if the applicant can show that the portion of the title meets the following criteria:
- (1) It creates a separate commercial impression apart from the complete title;
- (2) It is used on series of works; and
- (3) It is promoted or recognized as a mark for the series.
1202.08(d)(i) Mark Must Create a Separate Commercial Impression
When registration is sought for a portion of a title, the mark must be used as a separable element on the specimen. The examining attorney should consider the size, type font, color, and any separation between the mark and the rest of the title when making this determination. In re Scholastic Inc., 23 USPQ2d 1774, 1777 (TTAB 1992) ("[T]he words THE MAGIC SCHOOL BUS are prominently displayed on the books' covers, and are in a larger, bolder style of type and different color from the remainder of each title. Moreover, the words appear on a separate line above the remainder of each title."). If the portion of the title sought to be registered is not separable, the examining attorney must refuse registration on the ground that the mark is not a substantially exact representation of the mark as it appears on the specimen. See TMEP §807.12(d).
1202.08(d)(ii) Establishing a Series When the Mark is a Portion of the Title
An applicant may establish that the portion of the title of a creative work is used on a series by submitting more than one book cover or CD cover with the mark used in all the titles. For example, if the mark on the drawing is "THE LITTLE ENGINE" and on the book it appears as "THE LITTLE ENGINE THAT WENT TO THE FAIR," registration should be refused because the mark is a portion of a title of a single work. See In re Nat’l Council Books, Inc., 121 USPQ 198, 199 (TTAB 1959) (finding "NATIONAL" to be a portion of the title "NATIONAL GARDEN BOOK"). To establish use on a series, the applicant may submit additional book covers showing use of, e.g., "THE LITTLE ENGINE GOES TO SCHOOL," and "THE LITTLE ENGINE AND THE BIG RED CABOOSE."
1202.08(d)(iii) Evidence that the Portion of the Title is Promoted or Recognized as a Mark
When a mark is used merely as a portion of the title of a creative work, the applicant has a heavier burden in establishing that the portion for which registration is sought serves as a trademark for the goods. The mere use of the same words in more than one book title is insufficient to establish the words as a mark for a series. The applicant must show that the public perceives the portion sought to be registered as a mark for the series. In re Scholastic Inc., 23 USPQ2d 1774, 1777 (TTAB 1992) (holding THE MAGIC SCHOOL BUS used as a portion of the book titles in "THE MAGIC SCHOOL BUS AT THE WATERWORKS" and "THE MAGIC SCHOOL BUS INSIDE THE EARTH," functions as a mark for a series, because the record contained evidence of repeated use of the designation displayed prominently on book covers, as well as evidence that applicant promoted THE MAGIC SCHOOL BUS as a series title, that others used the designation in book reviews to refer to a series of books, and that purchasers recognized the designation as indicating the source of a series of books).
1202.08(e) Identification of Goods/Services
Identification Need Not Reflect Use on a Series. The identification of goods/services need not reflect that the applicant is using the title on a series of works (either written or recorded). It is sufficient that the record contains the evidence of a series.
Creative Works in a List of Goods or Services. A refusal of registration on the ground that the mark merely identifies the title of a single creative work can be made regardless of whether the creative work is the sole item in the identification of goods/services or is listed with other items. If the record contains information, or if the examining attorney learns from another source, that the mark identifies the title of a single creative work, the examining attorney must issue a partial refusal as to the relevant goods/services. A partial refusal is a refusal that applies only to certain goods/services, or to certain classes. See TMEP §718.02(a).
Example: An application for "newspapers, books in the field of finance, pencils, and coloring books" would be partially refused if the examining attorney determined, either from the application or from another source, that the mark identified the title of the "books in the field of finance." The use of the same mark on other non-creative matter such as the pencils and coloring books does not overcome the refusal.
1202.08(f) Title of a Single Work in §1(b), §44, and §66(a) Applications
The issue of whether a proposed mark is the title of a single creative work usually is tied to use of the mark, as evidenced by the specimen. Therefore, generally, no refusal will be issued in an intent-to-use application under §1(b) of the Trademark Act, 15 U.S.C. §1051(b), until the applicant has submitted a specimen with an allegation of use under §1(c) or §1(d) of the Act, 15 U.S.C. §1051(c) or (d).
However, in a §1(b) application for which no specimen has been submitted, if the examining attorney anticipates that a refusal will be made on the ground that the proposed mark is the title of a single creative work, the potential refusal should be brought to the applicant’s attention in the first action issued by the USPTO. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant before the allegation of use is filed, the USPTO is not precluded from refusing registration on this basis. In cases where the record indicates that the mark constitutes the title of a single work, the examining attorney may make the refusal prior to the filing of the allegation of use.
In an application under §44 or §66(a), where a specimen of use is not required prior to registration, it is appropriate for examining attorneys to issue the refusal where the record indicates that the mark will identify the title of a single work. Cf. In re Right-On Co., 87 USPQ2d 1152, 1156-57 (TTAB 2008) (noting the propriety of and affirming an ornamentation refusal, which is otherwise typically specimen based, in a §66(a) application).