The use of a mark must satisfy the “use in commerce” requirement necessary to establish priority of use over another source using the same mark. See Garden of Life, 318 F. Supp. 2d at 959.
For example, if there have been multiple visits to a website that uses a mark, this is considered minimal use that does not establish “use in commerce” to establish priority of use as a trademark.
Sporadic use of the mark on various goods and services with no evidence of sales is held to be insufficient to constitute trademark use for establishing priority.
For this same reason, the use of a mark as a title of one creative work is insufficient to be able to register that title as a trademark, where a trademark ordinarily is used in commerce as a source indicator for a particular class or classes of goods or services. It must be a title of more than one creative work, which is a series of works, for the mark to be considered for registration by the United States Patent and Trademark Office (USPTO).
In the case of one creative work, titles are considered to simply describe the work, and the USPTO has historically refused applications for single-work titles.
In the motion picture industry, consumers “expect a title to communicate a message about [a] book or movie, but they do not expect it to identify the publisher or producer”. See Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 902 (9th Cir. 2002).
For example, sophisticated consumers of motion pictures are unlikely to confuse the one-word title of a psychological horror film about the kidnapping of a seemingly innocent young boy who turns out to have unexpected powers of control, with a multi-word website identifying a proposed and unproduced screenplay about an underwater pirate adventure. See Guichard v. Universal City Studios, LLLP, United States District Court for the Northern District of California, June 15, 2007, No. C 066-6392 JSW, at Paragraph 14.
If authors were allowed to trademark single titles, they could potentially circumvent copyright law’s time limits.
You do not need to complete the series of works to consider registering the title of the series as a trademark, but you do need to complete more than one creative work within the series for the title to be eligible for registration.
A single creative work is one, individual work in which the content does not change significantly, whether that work is printed, recorded, or in electronic form; provided live on stage or in a live performance, or merely translated into different languages. See Section 1202.08(a) of the Trademark Manual of Examining Procedure.
Examples include:
- A single book in all media formats
- A single book provided in English-and Spanish-language versions
- A single sound recording, downloadable song, downloadable ring tone, DVD, and audio CD
- A single film or movie
- A single creative work issued in sections or chapters
- A single creative work that uses the same title in different media formats (e.g., a printed and electronic book) or on unabridged and abridged versions of the same work
- Theatrical performances such as a play, musical, opera, or similar production
- A single radio or television episode
Generally, a series of creative works is a type of work in which the content changes significantly with each edition, issue, or performance. See Section 1202.08(b)-(c), (d)(ii) of the TMEP.
Examples include:
- Periodically issued publications such as magazines, newsletters, comic books, comic strips, guidebooks, and printed classroom materials.
- A book with a second or subsequent edition in which the content changes significantly (such as a jacket cover for a cookbook that states it’s “new and revised”)
- Live performances by musical bands
- Television and radio series
- Movies and films that are provided as a series
- Educational seminars
- Computer software and computer games
- Coloring books and activity books
Evidence to show that your trademark is being used as the name, title, or title portion for a series of creative works typically consists of photographs, screen printouts or captures, point-of-sale displays, download links, and advertising.
The use of a title of a book, for example, on collateral goods, such as posters, mugs, or t-shirts, does not establish a series, as those other goods are not books.
A portion of a title of a single creative work may be registerable if the name of a portion of a title:
- Identifies that the title portion is being used for a series of creative works;
- Creates a commercial impression that is different from the complete title; and
- Is promoted and recognized as a source-indicator for the series.
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