IP Law Daily, TRADEMARK—TTAB: Title of book based on blog not registrable as title of series, (Sep 12, 2019)

By Thomas K. Lauletta, J.D.

The book in question, "THE NEUROTIC PARENT’S GUIDE," was not part of a series of books, or part of a series of creative works that included "THE NEUROTIC PARENT," the applicant’s registered mark for her blog.

The Trademark Trial and Appeal Board has upheld a decision of a USPTO examining attorney refusing registration on the Principal Register of an applicant’s proposed mark, "THE NEUTROTIC PARENT’S GUIDE." Registration was denied on the ground that the proposed mark failed to function as a trademark because it is merely the title of a single creative work (a book), rather than a series of creative works. Although it is possible that titles in different media can form a series of creative works, there was no evidence that the applicant’s blog—the title of which was the applicant’s previously registered mark "THE NEUROTIC PARENT"—contained sufficiently different content from that of the proposed mark to create a series of works. A series is not established when only the format of the work is changed, the Board explained (In re Rothman, September 10, 2019, Heasley, D.).

In May, 2003, applicant Judith Rothman sought registration on the Principal Register of the proposed mark THE NEUROTIC PARENT’S GUIDE (in standard characters, with GUIDE disclaimed), for "Publications, namely, books on the subjects of colleges and college admissions" in International Class 16. In March 2008, the applicant had obtained U.S. Reg. No. 4096671 for her blogging services under the title THE NEUROTIC PARENT.

The examining attorney refused registration of Applicant’s proposed mark on the ground that it failed to function as a trademark, and it was merely the title of a single creative work. The Board upheld this refusal to register.

Applicable law. The title of a single creative work, such as a book, is not considered a trademark, and is therefore unregistrable under Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§ 1051, 1052, and 1127. The rationale underlying this rule derives from the difference between copyright and trademark. A trademark is unlimited in time and remains effective as long as it is used. A book, however, only may be protected from copying by the copyright law for a limited duration, and the copyright will eventually expire. Thus, once the copyright on a book expires, those who then have the right to use the underlying work must also have the right to call it by its name.

Even though the title of a single work is unregistrable, the name for a seriesof works is registrable because it functions as a trademark. As an example of this principle, the Board noted that "THE MAGIC SCHOOL BUS" series of children’s books, was registrable because it had acquired meaning to the consuming public as an indicator of source of children’s books and not as an individual book title.

Series of creative works. The examining attorney cited language on a USPTO page that might be interpreted as stating that to be a book series, at least two books must be published. The Board rejected this narrow interpretation, stating that the core issue is not whether the creative works appear in the same medium; it is whether the works would tend to be associated with a single source in the mind of the public. The problem with the applicant’s proposed mark, the Board stated, was that the applicant does not seek to register a common characteristic in book titles, such as where registration of THE MAGIC SCHOOL BUS was allowed, based in part on the fact that each book’s cover contained a different subtitle distinguishing it from other books in that series. Here, the applicant seeks to register the title of the book THE NEUROTIC PARENT’S GUIDE. This book title does not prominently display the words THE NEUROTIC PARENT in a way that would create a commercial impression of a work that is separate from THE NEUROTIC PARENT’S GUIDE.

The Board also noted that in order to find different works were a part of a series, the works must have variations in their content. If the content is the same, but differs only in format, the works would be considered to be a single work. Here, the Board determined that the applicant did not provide evidence differentiating the content of the book and the blog, and therefore the Board was unable to conclude that these works constituted a series, as required for a trademark registration.

Acquired distinctiveness. As an alternative to its main argument that its proposed mark THE NEUROTIC PARENT’S GUIDE was part of a series, the applicant argued that the proposed mark qualified for registration on the Principal Register under Section 2(f), based on the applicant’s ownership and use of its THE NEUROTIC PARENT for more than five years, which demonstrated that the mark had acquired distinctiveness. The Board rejected this argument, stating that the title of a single work is unregistrable, even if the applicant can submit proof of acquired distinctiveness. The sine qua non of registrability, it concluded, was the use of the mark on a series of works.

This case is Serial No. 85945757.

Attorneys: Scott J. Major (Millen, White, Zelano & Branigan, PC) for Judith Rothman. Amy E. Thomas for the USPTO.

Cases: Trademark USPTO