TMEP 1202.08(c): Complete Title of the Work – Evidence of a Series

October 2017 Edition of the TMEP

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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.