King Productions, Inc.

Trademark Trial and Appeal Board

Nov 19, 2014

No. 76703458 (T.T.A.B. Nov. 19, 2014)

This Opinion is Not a
Precedent of the TTAB

Mailed: November 19, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re King Productions, Inc.
_____

Serial No. 76703458
_____

Elliott N. Kramsky, Esq., for King Productions, Inc.

Jeffery Coward, Trademark Examining Attorney, Law Office 106,
Mary Sparrow, Managing Attorney.
_____

Before Seeherman, Quinn and Greenbaum, Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
King Productions, Inc. (“Applicant”) seeks registration on the Principal Register
of the designation ROCK YOUR BODY (in standard characters) for
DVDs in the field of dance, exercise and fitness in
International Class 9, and
Books in the field of dance, exercise and fitness in
International Class 16.1

1 Application Serial No. 76703458 was filed on June 21, 2010, based upon Applicant’s claim
of first use anywhere and use in commerce since at least as early as May 21, 2009.
Applicant also claimed ownership of Registration No. 3845514 for ROCK YOUR BODY for
“clothing, namely, shirts and t-shirts” in International Class 25, and “educational services,
namely, providing classes, seminars, workshops and conventions in the field of dance” in
International Class 41.
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Serial No. 76703458
- 3 -

I. Preliminary Matter - Specimens
Applicant consistently has focused on the issue of whether the original and
substitute specimens are acceptable as displays associated with the goods rather
than whether ROCK YOUR BODY is the title of a single work. Although the issue
of whether ROCK YOUR BODY is the title of a single creative work is tied to the
manner in which the specimens display the proposed mark, the basis for the
Examining Attorney’s final refusal is not the acceptability of the specimens. The
basis is that ROCK YOUR BODY is merely the title of a single work in the form of
one DVD and one book, both of which have the title ROCK YOUR BODY.
Nonetheless, to the extent clarification is needed, we note that the original
specimens were not refused as insufficient by the Examining Attorney and,
regardless of whether they qualify as displays associated with the goods, are
sufficient since they show the mark on photos of the respective goods. Further, we
find that the substitute specimens, which include relevant ordering information
that the original specimens lack, are acceptable as a display associated with the
goods. See In re Sones, 590 F.3d 1282, 93 USPQ2d 1118, 1123 (Fed. Cir. 2009); In re
U.S. Tsubaki, Inc., 109 USPQ2d 2002 (TTAB 2014).
II. Applicable Law
A. Title of Single Work/Series
It is well-established that the title of a single work, such as a book, is not
considered a trademark, and therefore is unregistrable. Herbko Int’l Inc. v. Kappa
Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375 (Fed. Cir. 2002) (“the title of a single
Serial No. 76703458
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book cannot serve as a source identifier.”); In re Cooper, 254 F.2d 611, 117 USPQ
396, 400 (CCPA 1958), cert. denied, 358 U.S. 840 (1958); In re Arnold, 105 USPQ2d
1953, 1954 (TTAB 2013); In re Scholastic Inc., 223 USPQ 431 (TTAB 1984). In
essence, the title of a work is treated as the name of the work, and therefore as
describing the work. As the Court of Customs and Patent Appeals, a predecessor of
our primary reviewing court, stated in Cooper:
However arbitrary, novel or non-descriptive of contents the name of a
book—its title—may be, it nevertheless describes the book. Appellant
has nowhere attempted to answer the question, How else would you
describe it—what else would you call it? If the name or title of a book
were not available as a description of it, an effort to denote the book
would sound like the playing of the game “Twenty Questions.”
Cooper, 117 USPQ at 400 (emphasis in original).
However, it is equally settled law that the name of a series of works can be
registered as a trademark even though the title of a single work cannot. The court
explained this different treatment:
The name for a series, at least while it is still being published, has a
trademark function in indicating that each book of the series comes
from the same source as the others. The name of the series is not
descriptive of any one book and each book has its individual name or
title. A series name is comparable to the title of a periodical
publication such as a magazine or newspaper. While it may be
indicative either specifically or by association in the public mind, of the
general nature of the contents of the publication, it is not the name or
title of anything contained in it. A book title, on the other hand[,]
especially one which is coined or arbitrary, identifies a specific literary
work, of whatever kind it may be, and is not associated in the public
mind with the publisher, printer or bookseller—the “manufacturer or
merchant” referred to in the Trademark Act (Sec. 45, definition of
Trademark). If a title is associated with anything, it is with the author
for it is he who has produced the literary work which is the real subject
of purchase.

Id. at 400.
Serial No. 76703458
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Applicant does not argue that it uses ROCK YOUR BODY to identify a series of
books or DVDs, and there is no evidence of record to support such a conclusion.
Indeed, Applicant explains that “at the present time and as of the time that this
application was filed,” the website only contained “information concerning two
products (the displayed book and the displayed dvd).” Br. at 7. There is no question
that ROCK YOUR BODY is the title of a single DVD and a single book, and we so
find.
B. Statutory Basis for Title of Single Work Refusal
In the 55 years since the seminal decision in Cooper, this Board and the Federal
Circuit, our primary reviewing court, consistently have found that the title of a
single creative work is not a trademark. See, e.g., Herbko, 64 USPQ2d at 1379 (no
proprietary rights in CROSSWORD COMPANION until publication of the second
volume of a series of crossword puzzle books); Mattel Inc. v. Brainy Baby Co., 101
USPQ2d 1140, 1144 (TTAB 2011) (LAUGH & LEARN and design considered a title
of a single creative work, despite being used on a program offered in both VHS and
DVD formats, and therefore petition to cancel registration granted); In re
Posthuma, 45 USPQ2d 2011, 2014 (TTAB 1998) (title of live theater production
unregistrable, notwithstanding variations necessarily arising because the
performances were live).
Although Cooper referred to a title as being descriptive of the work, which would
suggest Section 2(e)(1) of the Trademark Act as the appropriate basis for refusal,
the registration of such titles has been refused on the basis that they fail to function
Serial No. 76703458
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as a mark under Sections 1, 2 and 45 of the Trademark Act. See TMEP § 1202.08
(“Title of a Single Creative Work”) (October 2014). Indeed, the USPTO’s Trademark
Operation interprets Cooper as an absolute bar to registration of the title of a single
creative work, viewing such matter as incapable of trademark significance and,
therefore, unprotectable and unregistrable even if the applicant submits proof of
acquired distinctiveness. TMEP § 1202.08 (“The title of a single creative work is not
registrable on either the Principal or Supplemental Register.”). This Board and the
Federal Circuit have affirmed the refusals made under Sections 1, 2 and 45 of the
Trademark Act.
We have undertaken a thorough review of the case law and the underlying
principles for refusing registration of titles, and have reached the conclusion that
the refusal to register a title of a single work should be based on Section 2(e)(1)
rather than on Sections 1, 2 and 45. A title of a single work is unregistrable because
it is the ultimate in descriptiveness (“How else would you describe it—what else
would you call it?” Cooper, 117 USPQ at 400), rather than because it cannot
function as a trademark, for as we have seen, once a title is used for a second work,
it becomes registrable as a mark designating a series. Further, because Section 2(f)
of the Trademark Act, 15 U.S.C. § 1052(f), provides a way to overcome a Section
2(e)(1) refusal if an applicant can show that the proposed mark has acquired
distinctiveness, it follows that a title of a single work should be registrable if an
applicant makes a sufficient 2(f) showing, such that it is no longer regarded merely
Serial No. 76703458
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as the title of a single work, but an indicator of source.3 “To 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). See also Coach Services Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1721, 1729 (Fed. Cir. 2012).
We therefore consider whether ROCK YOUR BODY has acquired distinctiveness as
a trademark and thus has become, in the view of relevant consumers, a source
identifier and not just a title of Applicant’s DVD and book.
C. Acquired Distinctiveness
Although the issue of acquired distinctiveness under Section 2(f) was not
specifically discussed during prosecution of this application, it is clear that one way
to overcome a Section 1, 2 and 45 refusal is to submit evidence that the proposed

3 Federal courts have protected unregistered titles from confusingly similar uses under
Section 43(a) of the Lanham Act upon a showing of secondary meaning. See Rogers v.
Grimaldi, 875 F.2d 994, 10 USPQ2d 1825, 1827 (2d Cir. 1989); EMI Catalogue Partnership
v. Hill, Holliday, Connors, Cosmopulos, Inc., 228 F.3d 56, 63, 56 USPQ2d 1270, 1274 (2d
Cir. 2000), amended by 2000 US App. Lexis 30761 (2d Cir. 2000); and Sugar Busters LLC v.
Brennan, 177 F.3d 258, 50 USPQ2d 1821, 1828 (5th Cir. 1999). Although the issue of
registrability differs from Section 43(a) issues such as infringement, unfair competition and
false designation of origin, and a right to register does not necessarily follow from an ability
to protect, the courts’ approach of protecting titles upon a showing of secondary meaning
would be in harmony with the approach, set forth herein, to consider registrability upon a
showing of acquired distinctiveness.
We also note that in his treatise McCarthy on Trademarks and Unfair Competition,
Professor McCarthy supports the policy of the federal courts to protect a single work title
upon acquisition of secondary meaning, and states that “[t]he USPTO’s refusal to register
single work titles that are recognized by both consumers and courts as marks only serves to
lessen the value of the federal register as a useful source to search for and verify rights.” 2
J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 10:4.10 (4th
ed. 2014).
Serial No. 76703458
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mark functions as a mark because it has acquired distinctiveness as a mark. See In
re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417, 422-24 (Fed. Cir.
1985). It is Applicant’s burden to establish a prima facie case of acquired
distinctiveness. Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1580, 6
USPQ2d 1001, 1006 (Fed. Cir. 1988); In re Hollywood Brands, Inc., 214 F.2d 139,
102 USPQ 294, 295 (CCPA 1954) (“[T]here is no doubt that Congress intended that
the burden of proof [under Section 2(f)] should rest upon the applicant.”). The
amount and character of such evidence depends on the facts of each case. Roux
Laboratories, Inc. v. Clairol Inc., 427 F.2d 823, 166 USPQ 34, 39 (CCPA 1970). “The
applicant’s burden of showing acquired distinctiveness increases with the level of
descriptiveness; a more descriptive term requires more evidence of secondary
meaning.” Steelbuilding, 75 USPQ2d at 1424 (internal citations omitted). The
evidence necessary to establish acquired distinctiveness may include the length of
use of the mark, advertising expenditures, sales, survey evidence, and affidavits
asserting source-indicating recognition. See, e.g., Steelbuilding.com, 75 USPQ2d at
1424.
As discussed above, because ROCK YOUR BODY is the title of a single work,
ROCK YOUR BODY is highly descriptive of the eponymous book and DVD.
Accordingly, Applicant has a significant burden to prove acquired distinctiveness.
We therefore examine the record to determine whether Applicant has established
acquired distinctiveness. See Trademark Rule 2.41(a). We are concerned
particularly with whether there has been sufficient public exposure of ROCK YOUR
Serial No. 76703458
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BODY in such a manner that consumers would view ROCK YOUR BODY not
merely as a title of the book or the DVD, but as a trademark indicating source. It is
here that Applicant’s showing falls short. Cf. In re First Draft, 76 USPQ2d 1183,
1192 (TTAB 2005) (“In short, while we agree with applicant that an author’s name
may, under appropriate circumstances, be registered as a trademark for a series of
written works, applicant has failed to establish that such circumstances are present
in this case.”).
The record includes Applicant’s ownership of a prior registration for ROCK
YOUR BODY (for different goods and services) on the Principal Register. This
registration is insufficient to prove acquired distinctiveness for the goods identified
in the instant application. See In re Loew’s Theatres, Inc., 769 F.2d 764, 226 USPQ
865, 869 (Fed. Cir. 1985) (in discussing “appropriate cases” in which a prior
registration “may” be accepted as “evidence” of distinctiveness under Trademark
Rule 2.41(b), the court stated: “The examining attorney and the board considered
LTI’s registration but were unpersuaded as to the sufficiency of this proof alone in
view of the absence of any evidence concerning the extent of actual usage.”); In re
Cordua Rests. LP, 110 USPQ2d 1227, 1234 (TTAB 2014) (prior registration alone
not sufficient to establish acquired distinctiveness in highly descriptive term).
Nor is the evidence of the prior registration, combined with the other evidence
submitted by Applicant, sufficient to demonstrate acquired distinctiveness. Ms.
Cara, who works for Rodale, Inc., a distributor of Applicant’s DVD and book,
testified that through September 2011, “Rodale received and filled 884 sales of sets
Serial No. 76703458
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of ROCK YOUR BODY books and dvd’s based upon orders originating with and
taken from the rockyourbody.com website.” Cara Aff., ¶ 5. The webpage that is the
specimen, as noted previously, appears on the website.
The webpage shows ROCK YOUR BODY used not only as the title of the book
and the DVD, but also as a trademark for apparel, choreography and dance
workshops, and special event production services (the apparel and workshops being
the subject of Applicant’s prior registration). Although this manner of display would
convey to consumers seeing the webpage that ROCK YOUR BODY plays a role
other than as a title of a book or a DVD, the evidence fails to demonstrate that there
has been significant exposure of this display, such that a significant portion of the
consuming public would be aware of it. There is no specific direct evidence of public
exposure to the webpage that is the specimen, such as the number of hits or visitors
to the website. Although there were 884 sales of books and DVDs originating from
the website, at most they represent 884 customers who visited the webpage.4 While
other people might have viewed the webpage without making a purchase, absent
more evidence from Applicant, any conclusion as to the number of people who
visited the website or viewed the webpage would be purely speculative. Further, the
number that is of record, 884 sales, is insufficient for us to find that consumers
would view ROCK YOUR BODY as a trademark for the book and DVD, rather than
just as the title of a single creative work. As noted previously, because a title of a
single work is considered to be highly descriptive, Applicant’s burden to prove

4 Obviously some of the buyers could have purchased multiple copies of the book and DVD.
Serial No. 76703458
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acquired distinctiveness is heavy, and is not met by showing, at most, 884
exposures of the webpage.
Other than the specimen webpage, we simply have no evidence regarding sales
or advertising, and no evidence from which we could conclude that ROCK YOUR
BODY has acquired distinctiveness such that consumers would recognize it as a
trademark for the book and DVD, rather than just as the title thereof.
Decision: The refusal to register Applicant’s mark ROCK YOUR BODY is
affirmed in each class.