3522806 Canada Inc.

Trademark Trial and Appeal Board

May 5, 2004

No. 76394362 (T.T.A.B. May. 5, 2004)

Paper No. 12
TJQ
Mailed:5/5/04
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re 3522806 Canada Inc.
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Serial No. 76394362
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Howard N. Aronson, Nancy Dwyer Chapman and Leah E.
Greenspan of Lackenbach Seigel for applicant.
Ira Goodsaid, Trademark Examining Attorney, Law Office 115
(Tomas Vlcek, Managing Attorney).
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Before Seeherman, Quinn and Drost, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application was filed by 3522806 Canada Inc. to
register the mark shown below
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 76394362
2
for “entertainment in the nature of theater productions.”1
The trademark examining attorney refused registration
under Sections 1, 2 and 45 of the Trademark Act on the
ground that the mark is the title of a single creative work
and, accordingly, is unregistrable.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Although applicant initially requested an oral hearing, the
request subsequently was withdrawn.
Applicant asserts, in urging that the refusal be
reversed, that the mark “is used to designate each
incarnation of performance in conjunction with other
distinct factors of each performance such as venue, length
of performance, medium, and content, thereby comprising the
unifying identifying brand name for each distinct
performance among the series.” (Brief, p. 2). Applicant
goes on to state that the mark “identifies a series of
evolving, and each different, entertainment performances
emanating from a single identifiable source, rather than
merely the re-showing of a single, identical performance.”
1 Application Serial No. 76394362, filed April 10, 2002, alleging
first use anywhere and first use in commerce on July 21, 1999.
The application includes a statement that “’Ulalena’ is a
Hawaiian word that is the name for a wind that blows on the
island of Maui and is also the name for rains that fall on the
island of Maui.”
Ser No. 76394362
3
(Brief, p. 3). As applicant’s schedule shows, the show has
been staged as an entire production in a conventional
theater and, in addition, elsewhere as a production for a
radio station, an awards ceremony, and sporting events.
According to applicant, “all are distinct in the types of
scenes, music, spoken word, choreography, stage action,
lighting and set design they contain” and that “each
performance is separate, different and being re-created and
re-staged, based on the venue and medium where it is
anticipated to be performed.” (Brief, p. 3). Applicant
points out that “the performances at a golf tournament or
at a National Geographic Society lecture, for example, are
not identical to the performance given at Maui Myth & Magic
Theatre, nor are they of ninety minutes’ duration.” The
examining attorney, applicant argues, has “focused solely
on one of Applicant’s series of performances but has
ignored the evidence submitted of other companion
performances in the overall series of ULALENA theatrical
entertainments.” (Brief, p. 4). Further, applicant
contends, while the mark is used to designate a series of
various theatrical performances, “it is coupled with
information that recites distinguishing factors of each
performance, such as where and when the particular
performance is to take place.” (Brief, p. 6). In support
Ser No. 76394362
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of its position, applicant submitted a schedule of the
seven off-site performances of its production since the
first one in August, 2001.
The examining attorney maintains that the mark sought
to be registered is the title of a single theatrical
production. The examining attorney asserts that while the
cast, venue and show length may vary, these facts do not
alter the fact that the mark identifies a particular show
about Hawaiian history, legends and music. This case,
according to the examining attorney, falls squarely under
the holding of the decision in In re Posthuma, 45 USPQ2d
2011 (TTAB 1998). In support of the refusal, the examining
attorney submitted materials retrieved from the Internet
regarding applicant’s theatrical show performed under the
name “Ulalena.”
We find that the title of applicant’s live theater
production, ULALENA, is not a registrable service mark for
entertainment services in the nature of theater
productions. The specimen of record, together with the
Internet evidence submitted by the examining attorney, make
it clear that ULALENA is the title of applicant’s theater
production.
The present case is similar to the situation in In re
Posthuma, supra. In that case, the Board held that the
Ser No. 76394362
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proposed mark PHANTASM, as the title of a live theater
production, was unregistrable for entertainment services in
the nature of live theater production. In analyzing the
issue, the Board viewed the language of In re Cooper, 254
F.2d 611, 117 USPQ 396 (CCPA 1958), regarding the
unregistrability of a book title, to be equally applicable
to the title of a live theater production.
In the case of In re Posthuma, supra at 2013-14, the
Board stated the following:
The gist of one of applicant’s main
arguments is that plays are different
from books because of the theater’s
live component, with each performance
differing due to the abilities of the
cast, stage crew, set designers,
musicians and the like. Applicant also
points out that its production has
evolved through the years by the
addition of new elements or the
rearrangement of existing ones. We are
not persuaded by these arguments. We
recognize that the nature of live
theater dictates that changes will
occur from time to time in a stage
production. Nonetheless, as appears to
be the case with applicant’s
production, the essential story of the
play remains, by and large, intact.
Whatever the changes made to this live
theater production, it still remains a
single work. Thus, these often subtle
changes do not transform the show into
a “series” of shows, thereby turning
the unregistrable title into a
registrable service mark.
Ser No. 76394362
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Applicant’s main arguments herein are very similar to
the ones found unpersuasive in the earlier decision.
Applicant’s main brief contains no discussion of In re
Posthuma, but applicant, in the final paragraph of its
reply brief (pp. 2-3), attempts to distinguish that case
from the present one as follows:
Only one incarnation of the ULALENA
series of performances occurs in a
theater; only one incarnation of
ULALENA takes the form of a full-
fledged play. Applicant has submitted
incontrovertible evidence of a family
of ULALENA performances, each of which
must necessarily vary greatly in their
types of scenes, music, spoken word,
choreography, stage action, lighting
and set design, given the variant
mediums and venues. Each of those
eight (8) submitted forms of
performance are not merely minor
variations of a full-length play with
all the bells and whistles that
accompany a performance in a new state-
of-the-art theater, rather they are
distinct and disparate forms of
performances.
The record is devoid of any evidence showing that the
proposed mark is being used for a series of different
productions. In point of fact, other than counsel’s
assertions, there is no evidence showing that applicant’s
seven “off-site performances” shown on its schedule differ
in any respect from the original production. In any event,
that there may be variations of the production in terms of
Ser No. 76394362
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length of show, music, staging, etc. to better suit
particular venues and audiences is not dispositive. As
pointed out by the examining attorney, such things as the
length of a show and its staging are varied due to the many
vagaries inherent in live theater (including road shows of
a production).2 In the present case, there apparently are
different versions of the production because of the
constraints caused by different venues where it may be
shown, or by different time constraints. The simple fact
remains that ULALENA is the title of a single theater
production about Hawaiian cultures, traditions and history.
Although the venue or length of performance may vary, each
production would be regarded by consumers as the same.
2 We agree with the following assessment made by the examining
attorney (Brief, pp. 5-6):
The applicant posits that ULALENA is a
service mark because its content varies
somewhat, with different performers in
different venues performing the play for 75
to 90 minutes. Just because circumstances
dictate that the show be briefer sometimes,
this does not make the name of the show
function as a service mark. Since most
venues differ, any show must adapt to its
setting. The Maui Myth & Magic Theatre
(MM&MT) is probably ideally suited for
staging the ULALENA show. Other places may
lack unique features of the MM&MT, and
therefore mandate that the play be modified
to suit its surroundings. Thus, the
decision to shorten a show by deleting
certain acts or scenes to suit particular
audiences or locales may be made to
accommodate such circumstances.
Ser No. 76394362
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We conclude that ULALENA (stylized), as the title of a
single live theater production, is unregistable because it
does not function as a service mark.
Decision: The refusal to register is affirmed.