In re King Productions, Inc., Ser. No. 76703458 (T.T.A.B. Nov. 19, 2014) (not precedential)
The Trademark Trial and Appeal Board (“T.T.A.B.” or “the Board”) recently issued a non-precedential opinion that runs counter to the U.S. Patent and Trademarks Office’s (“USPTO”) longstanding prohibition against the registration of titles of single creative works. King Productions, Inc. applied to register the mark ROCK YOUR BODY in connection with DVDs in the field of dance, exercise, and fitness in Class 9, and books in the field of dance exercise and fitness in Class 16. In re King Productions, Inc., Ser. No. 76703458, at 1 (T.T.A.B. Nov. 19, 2014) (not precedential). The Examiner refused registration on the basis that the mark did not function as a mark because it consisted of the title of a single DVD and a single book, as shown in the specimens. Id. at 2. The T.T.A.B. ultimately affirmed the refusal, but specifically noted that the mark could be registered upon a showing of acquired distinctiveness, a notable departure from prior case law. Id. at 11.
Under past USPTO practice, titles of single creative works such as DVDs, books, songs, and albums were not deemed to function as trademarks on the basis that, by their nature, the titles of single creative works simply described the works themselves. Accordingly, titles of single creative works were not treated as capable of identifying source and were barred from registration. Id. at 3-4. In contrast, the USPTO considered the name of a series of works to be source identifying and registrable because the series name indicated that each book in the series came from the same source. Id. at 4.
The King Productions panel reviewed the established case law and principles underlying the prohibition against registration of titles of single works, and determined that the statutory basis for refusing registration was flawed. At its heart, the rationale for refusing registration was that titles of single works merely described the goods. However, unlike other descriptive marks that were registrable on the Supplemental Register or on the Principal Register with a showing of acquired distinctiveness, titles of creative works were completely barred on the basis that they were incapable of functioning as trademarks. Id. at 6. The Board reasoned that, as with other descriptive marks, the title of a single work should be registrable if the applicant demonstrates that it has acquired distinctiveness and is no longer merely the title of a single work, but an indicator of source. Id. at 6-7.
The ultimate impact and legacy of the King Productions decision is unclear. First, it appears that the Board clearly intended its decision to change the manner in which titles of single creative works are treated, but the ruling runs counter to well-settled precedent from its immediate appellate court, the Federal Circuit, and the Federal Circuit’s predecessor, the Court of Customs and Patent Appeals. Moreover, the King Productions opinion remains unpublished and not precedential at this writing. That may change, as T.T.A.B. decisions are sometimes later converted to precedential status. But, for now, it remains to be seen whether the USPTO, other T.T.A.B. panels, and the Federal Circuit will follow the new standard set by the King Productions decision, or whether the Federal Circuit’s existing case law will continue to prevail. To date, the Trademark Manual of Examining Procedure (“TMEP”) instructs examiners to refuse registration of titles of single creative works based on Sections 1, 2, and 45 of the Trademark Act, and states that such marks are “not registrable on either the Principal or Supplemental Register.” TMEP § 1202.08. The TMEP, which was most recently updated in January 2015, makes no mention of King Productions.
Another open question is how much evidence will be necessary to prove acquired distinctiveness, and what kind of evidence will be given the most weight. The King Productions panel notes that titles of single creative works should be considered “highly descriptive of the eponymous [work]” and that the applicant “has a significant burden to prove acquired distinctiveness.” Id. at 8.
In King Productions, the evidence that ROCK YOUR BODY had acquired distinctiveness consisted of previous registrations of the mark for other goods, 884 sales of the book or DVD from the rockyourbody.com website, and screenshots showing the mark used on the website other than as the title of the works, including as the name of a dance workshop and in connection with apparel. Id. at 10. However, the evidence failed to show that the public viewed the term as a source-identifying mark rather than as a title. The Board noted that the use of the mark as a trademark in connection with other goods and services on the website would convey to consumers that ROCK YOUR BODY was source identifying, but the record did not include any evidence to show how much exposure consumers had to the website. Id. at 10.
It seems clear that high sales figures of the underlying work itself would be insufficient to show acquired distinctiveness because the sales do not demonstrate that consumers view the term as a mark rather than as a descriptive title. Instead, evidence showing consumer recognition of the term as a mark, such as survey evidence or evidence regarding consumer exposure to trademark use for other goods or services, may be necessary to prove acquired distinctiveness. Therefore, it appears that it will be difficult for applicants to prove acquired distinctiveness, even if the USPTO and its examiners follow the King Productions ruling. Finally, the board made no mention of the Supplemental Register. As with the Principal Register, registration on the Supplemental Register has been unavailable for titles of single creative works. If the reasoning in King Productions is followed and marks consisting of titles of single works are considered “merely descriptive,” registration on the Supplemental Register should now be available for titles of single creative works. However, this too remains an unanswered question.