Phil Posthuma and Cordell Langeland

Trademark Trial and Appeal Board

Feb 24, 1998

No. 74664809 (T.T.A.B. Feb. 24, 1998)

Paper No. 14
JQ
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB FEB 24, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Phil Posthuma and Cordell Langeland
________
Serial No. 74/664,809
_______
Lloyd A. Heneveld of Price, Heneveld, Cooper, DeWitt &
Litton for applicant.
Andrew P. Baxley, Trademark Examining Attorney, Law Office
104 (Sidney I. Moskowitz, Managing Attorney).
_______
Before Seeherman, Quinn and Hairston, Administrative
Trademark Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Phil Posthuma and
Cordell Langeland, a partnership organized under the laws of
the state of Michigan composed of Phil Posthuma and Cordell
Langeland, both United States citizens (hereinafter
“applicant”), to register the mark PHANTASM for
“entertainment services in the nature of live theater
production.”1

1 Application Serial No. 74/664,809, filed April 24, 1995,
alleging dates of first use of April 9, 1993.
Ser No. 74/664,809
2
The Trademark Examining Attorney has refused
registration under Sections 1, 2 and 45 of the Trademark Act
on the ground that PHANTASM does not function as a service
mark because it is the title of a single creative work.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have submitted briefs.
Applicant urges that the refusal to register be
reversed, contending that its services are performed
periodically and they “obviously change from time to time
due to the performance of the actors, musicians, crews,
etc.” (brief, p. 3) Applicant goes on to distinguish the
present case from the ones involving the title of a single
book wherein the proposed marks were found to be not
registrable. See, for example, In re Cooper, 254 F.2d 611,
117 USPQ 396 (CCPA 1958); and In re Scholastic Inc., 223
USPQ 431 (TTAB 1984). Applicant argues that there are
differences between “a book which is a document that can be
considered to be written in stone and is a thing identified
only by its title” and “[entertainment services in the
nature of live theater production], the quality of which
depends upon the performance of the actors, the crew,
designers, and musicians, all of which are controlled to a
great extent by the audition and selection by the
applicants.” (brief, p. 4) In connection with its
arguments, applicant submitted materials bearing the
Ser No. 74/664,809
3
applied-for mark, namely, advertisements, stationery,
tickets, prerecorded music cassette tapes and programs for
the show PHANTASM. According to applicant, PHANTASM is not
merely the title of a written play, but is a service mark
that is utilized in advertising and publicizing applicant’s
entertainment services.
The Examining Attorney contends that the title of a
single literary work is not registrable and that the same
reasoning used in the case of book titles is equally
applicable to the titles of live theater productions. The
Examining Attorney maintains that, just as the title of a
book merely describes the material found therein, the title
of a live theater production describes the material in the
play. Even with changes in casts, musicians and crews, a
live theater production remains the same single work,
according to the Examining Attorney. While the Examining
Attorney acknowledges that applicant’s playbills show
differences between its productions of PHANTASM from year to
year, he contends that changes are routinely made in live
theater productions and that the production remains a single
creative work.2

2 Applicant attached to its appeal brief a copy of Registration
No. 1,767,685 for THE PHANTOM OF THE OPERA and design for
“entertainment services in the nature of live theatre production”
(“The Phantom of the Opera” disclaimed). The Examining Attorney
properly objected to this evidence inasmuch as it was untimely
submitted. Trademark Rule 2.142(d). The Examining Attorney
stated that, in any event, the registration includes a disclaimer
Ser No. 74/664,809
4
We begin our analysis with the seminal case in this
area of the law, a case that was issued forty years ago,
namely, In re Cooper, supra. In that case, the Court of
Customs and Patent Appeals, a predecessor to the Court of
Appeals for the Federal Circuit, considered the issue of
whether the title of a book was a registrable trademark for
books under the Trademark Act of 1946. The court initially
noted:
It has so long been settled that the
title of a book cannot be registered as
a trademark, because it is not a
trademark, that there has been some
question in our minds as to whether the
concurring decisions below should not be
summarily affirmed with mere citation of
some of the principal authorities.
Id. at 398.3 The court observed that before there can be a
registration, there must be trademark use. The court found

of the title of the live production and that this supports the
Examining Attorney’s view that the title of applicant’s live
theater production is unregistrable. We agree.
3 Section 45 of the Trademark Act, as amended, 15 USC 1127,
defines the word “trademark” as including
any word, name, symbol, or device, or any
combination thereof—-
(1) used by a person, or
(2) which a person has a bona fide
intention to use in commerce and applies
to register on the principal register
established by this Act, to identify and
distinguish his or her goods, including
a unique product, from those
manufactured or sold by others and to
indicate the source of the goods, even
if that source is unknown.
Section 45 also sets forth the definition of a
service mark:
Ser No. 74/664,809
5
that the proposed mark in that case (TEENY-BIG for
children’s books) was a “descriptive name” rather than a
trademark. The court explained as follows:
But however arbitrary, novel or non-
descriptive of contents the name of a
book—-its title--may be, it nevertheless
describes the book.
*****
A book title. . .especially one which is
coined or arbitrary, identifies a
specific literary work, of whatever kind
it may be, and is not associated in the
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,

The term “service mark” means any word,
name, symbol, or device, or any combination
thereof—-
(1)used by a person, or
(2)which a person has a bona fide intention
to use in commerce and applies to register
on the principal register established by
this Act, to identify and distinguish the
services of one person, including a unique
service, from the services of others and to
indicate the source of the services, even
if that source is unknown. Titles,
character names, and other distinctive
features of radio or television programs
may be registered as service marks
notwithstanding that they, or the programs,
may advertise the goods of the sponsor.
The last sentence of the definition of a “service
mark” was substituted in 1962 for “and includes
without limitation the marks, names, symbols, titles,
designations, slogans, character names, and
distinctive features of radio or other advertising
used in commerce.” While the title of a television or
radio series may be registrable (as is the title of a
series of books, see In re Cooper), a play is
distinguishable from such series because a play is a
single work, and the title of a single work does not
function as a source indicator for that work.
Ser No. 74/664,809
6
it is with the author for it is he who
has produced the literary work which is
the real subject of purchase. [emphasis
in original]
Id. at 400. The court further noted a “compelling reason”
why the name or title of a book cannot be a trademark:
The protection accorded the property
right in a trademark is not limited in
time and endures for as long as the
trademark is used. A book, once
published, is protected against copying
only if it is the subject of a valid
copyright registration and then only
until the registration expires, so
eventually all books fall into the
public domain. The right to copy which
the law contemplates includes the right
to call the copy by the only name it has
and the title cannot be withheld on any
theory of trademark right therein. As
was aptly said in In re Page Company, 47
App. D.C. 195, when copyright in a
protected work expires, “the use of the
descriptive name becomes publici
juris.”. . .Of course, it makes no
difference whether the work whose name
is sought to be registered is
copyrighted. If it is not, the public
may copy it at once and would be as
clearly entitled to call it by its name.
Id. The court went on to deal with other arguments made by
applicant in that case, including that the rights in book
titles may be afforded some protection under the laws of
unfair competition. Further, the court distinguished
between the registrability as a trademark of the name of a
series of books and the unregistrability of the title of a
single book, the court noting that the name of a series is
Ser No. 74/664,809
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not descriptive of any one book but is comparable to the
title of a periodical publication such as a magazine or a
newspaper.
Through the years the Board has reiterated that titles
of single works are not registrable as trademarks. See, for
example, Paramount Pictures Corp. v. Romulan Invasions, 7
USPQ2d 1897, 1899 (TTAB 1988), In re Hal Leonard Publishing
Corp., 15 USPQ2d 1574 (TTAB 1990) and In re Scholastic,
Inc., 23 USPQ2d 1774, 1776 (TTAB 1992). In In re Hal
Leonard (involving the registrability of the proposed mark
INSTANT KEYBOARD for a music instruction book), supra at
1576, the Board noted:
This brings us to the second ground of
refusal on the basis that INSTANT
KEYBOARD is merely the title of a single
creative work and therefore does not
function as a trademark to indicate
source. Over 30 years ago the Court of
Customs and Patent Appeals recognized
that it was then a settled principle
that the title of a book cannot be
registered as a trademark, and that
principle remains unchanged today.
[citing In re Cooper].
After careful consideration of applicant’s arguments,
we find that the title of applicant’s live production,
PHANTASM, is not a registrable service mark for
entertainment services in the nature of live theater
production. The materials of record in the application
leave no doubt that PHANTASM is the title of applicant’s
Ser No. 74/664,809
8
play. PHANTASM appears in prominent fashion as the title on
tickets, playbills and advertisements for the performances.
In the “Producers’ Notes” section of the playbill, the
following language appears: “Welcome to the debut of
Phantasm. . .The word Phantasm means an illusion, or a false
perception of reality. This title was chosen because it
demonstrates the conflicts that occur in the spiritual world
as well as the material world.” [emphasis added] The
cassette tape sound track recording reads “Phantasm A
Musical”. In sum, the materials of record all identify
PHANTASM as the name of the live theater production, and the
purchasing public likely would perceive it as the title of
the play, as opposed to perceiving it as a service mark
identifying source or origin. In this connection, we
believe that the title of a play is perceived in the same
manner as is the title of a book which, as discussed above,
is unregistrable.
Our view is that the language of In re Cooper, supra,
regarding the registrability of a book title is equally
applicable to the title of a live theater production. In
point of fact, the court appeared to acknowledge as much in
its opinion:
But, as in the case we are dealing with,
authors and their publishers are
constantly producing new books, the
contents of which are new ideas in
different forms--new plays, new yarns,
new attempts to recapture the elusive
Ser No. 74/664,809
9
spirit of childhood. Each is a new
thing, unique, which has to have a name.
. .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.” [emphasis added to the word
“plays”]
Id. at 399. The court’s reference to “plays” buttresses our
view that the registrability of the title of a live theater
production is closely analogous to the registrability of the
title of a book.
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
Ser No. 74/664,809
10
turning the unregistrable title into a registrable service
mark. Cf. In re Scholastic, Inc., supra.
Applicant, in arguing for reversal of the refusal, has
not mentioned the Trademark Clarification Act of 1984, Pub.
L. No. 98-620, 98 Stat. 3335, enacted November 8, 1984.
However, we have considered this 1984 legislation inasmuch
as one might argue that it has particular importance in
these types of cases wherein titles of unique creative works
are sought to be registered. That is to say, one might
contend that a live theatrical play is a “unique” product,
and that the 1984 Act provides that a proposed mark must not
be denied registration solely because it identifies a unique
product. We are not persuaded by such an analysis.
The legislative history of the Trademark Clarification
Act of 1984 indicates that the Act was designed to clarify
the standard for determining genericness and to do “nothing
more than cure the problem caused by the ninth circuit” in
their opinion in the Anti-Monopoly case4 when that court
canceled a registration of the mark MONOPLOY for board
games. See: Trademark Clarification Act, 1984: Hearing on
S. 1990 before the Subcommittee on Patents, Copyrights and
Trademarks of the Senate Judiciary Committee, 98th Congress,
2d Session, reported in 3 Gilson, Trademark Protection and

4 Anti-Monopoly, Inc. v. General Mills Fun Group, Inc., 684 F.2d
1316, 216 USPQ 588 (9th Cir. 1982), cert. denied, 459 U.S. 1227,
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Practice: Section by Section Legislative History of the
Lanham Act, p. 14-241 (1992). Congress in that year, by
passing the Trademark Clarification Act, forbade use of the
“purchaser motivation” test for genericness or abandonment.
A review of the testimony and the reports before the
relevant subcommittees of the House and the Senate shows
that aside from reversing the standard used by the Ninth
Circuit in the Anti-Monopoly case, the amendment was not
intended to effect important substantive changes in the law
or to disrupt other established trademark doctrines. Senate
Report 98-627 on S. 1990, id., at 14-403. The legislation
was not intended to “create new law or establish new
standards, but rather reaffirms and clarifies the
established principles of trademark law existing before the
Anti-Monopoly decision.” Id., at 14-404 and 14-511. As
recently as 1992, the Board, as noted above, reiterated and
followed the doctrine enunciated in In re Cooper, finding
that the law in this area had not changed. Indeed, the
legislative history of the Act reveals that it was not
intended to change the law but merely to clarify it. See
also: Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d
1551 (Fed. Cir. 1991) [The court noted the statement of
Senator Hatch, the original sponsor of the legislation:

103 S.Ct. 1234 (1983), reh. denied, 460 U.S. 1104, 103 S.Ct. 805
(1983).
Ser No. 74/664,809
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“The bill is not intended to effect important substantive
changes in the mainstream of trademark law.”].
To allow registration of play titles and not book
titles would lead to the anomalous result of registering
such titles as “Ragtime” and “Having Our Say” for a single
theatrical production, but not allowing registration when
these same titles are used as book titles. Titles of plays
and book titles (or, for that matter, movie titles) are
likely perceived in the same manner by the public, so we see
no reason why they should be treated differently by the
Office.
We conclude that PHANTASM, as the title of a single
live theater production, is unregistrable because it does
not function as a service mark.
Decision: The refusal to register is affirmed.
E. J. Seeherman
T. J. Quinn
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial
and Appeal Board