In the recent case, In re King Productions, Inc., Serial No. 76703458, the Trademark Trial and Appeal Board reaffirmed that the title of a single work is not entitled to trademark protection without acquiring further distinctiveness. In order for the title of a work to be afforded trademark protection, it must either be part of a series, or the applicant must prove the work has acquired distinctiveness among consumers. Acquired distinctiveness can be shown by evidence of sales and advertising, but according to the TTAB, Applicant’s burden to prove acquired distinctiveness is heavy. In King Productions, the burden was not met by showing over 800 exposures of applicant’s webpage. The Board explained, “[t]o show that a mark has acquired distinctiveness, an applicant must demonstrate that the relevant public understands the primary significance of the mark as identifying the source of a product or service rather than the product or service itself.” Steelbuilding.com, 15 F.3d 1293, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005). It went on to describe that “[a] title of a single work is unregistrable because it is the ultimate in descriptiveness rather than because it cannot function as a trademark, for as [the Board has] seen, once a title is used for a second work, it becomes registrable as a mark designating a series.”

Source: http://thettablog.blogspot.com Trademark Trial and Appeal Board Opinion, Serial No. 76703458

For more information on this topic, please visit our Trademark Prosecution service page.

Klemchuk LLP is an Intellectual Property (IP), Technology, Internet, and Business law firm located in Dallas, TX.  The firm offers comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights.  The firm also provides a wide range of technology, Internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domain name dispute resolution.  Additional information about the IP law firm and its IP law attorneys may be found at www.klemchuk.com.

Klemchuk LLP hosts Culture Counts, a blog devoted to the discussion of law firm culture and corporate core values with frequent topics about positive work environment, conscious capitalism, entrepreneurial management, positive workplace culture, workplace productivity, and corporate core values.