What is a "Title of a Single Work" Refusal?
A title of a single work refusal is when the USPTO refuses registration of a mark because the sample of how the mark is actually used (the "specimen") or other information in the record shows the mark being used solely as the title of a single creative work, such as a book title, and not as a trademark.
Single creative works include works in which the content does not change significantly, whether that work is in printed, recorded, or electronic form. Single creative works generally consist of materials such as books, sound recordings, downloadable songs, downloadable ring tones, videocassettes, DVDs, audio CDs, and films. Creative works that are issued in sections or chapters are still considered single creative works. Creative works that use the same title in different media (e.g., book and CD) or on unabridged and abridged versions of the same work are considered single creative works. Theatrical performances are also single creative works, because the content of a play, musical, opera, or similar production does not significantly change from one performance to another.
Generally, a creative work will not be considered a single work if evidence exists that it is part of a series (e.g., the work is labeled "volume 1," "part 1," or "book 1") or is a type of work in which the content changes significantly with each edition, issue, or performance. Single creative works do not include periodically issued publications such as magazines, newsletters, comic books, comic strips, guide books, and printed classroom materials, because the content of these works changes significantly with each issue. Also, a book with a second or subsequent edition in which the content changes significantly will not be considered a single creative work. For example, a jacket cover that states a cookbook is a "new and revised" version would indicate that it includes significant revisions.
Further, live performances by musical bands, television and radio series, and educational seminars are not single creative works because they are presumed to change with each presentation. And computer software, computer games, coloring books, and activity books are also not considered single creative works because such content similarly changes.
For more information, see Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; Herbko Int'l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1162-63, 64 USPQ2d 1375, 1378-79 (Fed. Cir. 2002); In re Cooper, 254 F.2d 611, 615-16, 117 USPQ 396, 400 (C.C.P.A. 1958); In re Posthuma, 45 USPQ2d 2011, 2012-13 (TTAB 1998); In re Hal Leonard Publ'g Corp., 15 USPQ2d 1574, 1576 (TTAB 1990); TMEP §§904.07(b), 1202.08 et seq.
How Can I Overcome This Refusal?
Below are possible response options for overcoming a title-of-a-single-work refusal. WARNING: Response option (2) is not appropriate for applications filed under Section 66(a) of the Trademark Act.
NOTE: You should respond using the Trademark Electronic Application System (TEAS) "Response to Office action" (ROA) form (available at http://teasroa.uspto.gov/roa/), which automatically provides any required statement and supporting declaration language referenced in the Office action.
(1) Submitting actual evidence that shows use of the mark on a series of creative works to establish that applicant's mark is not used as the title of a single creative work. Evidence of a series includes copies of at least two different book covers or packaging for recorded works (not two copies of the same work) that show the mark as a source identifier for the series and distinguish the mark from the individual titles of the works in that series. It is not necessary to show that the mark was used on other works in the series prior to the filing date of the application or allegation of use. However, evidence that the applicant merely intends to use the mark on a series is not sufficient evidence of use on a series.
For more information on acceptable evidence of a series of creative works, see TMEP §1202.08(b)-(c).
TEAS ROA form instructions: Answer "Yes" to form wizard question #1. In the "Argument" section, use the "Click here to Enter Argument(s)" button to enter argument text. In the "Evidence" section, follow the instructions therein to upload JPG/PDF files that demonstrate evidence of a series. For technical assistance, contact TEAS@uspto.gov.
(2) Amending your filing basis to intent to use under Section 1(b) to overcome the title-of-a-single-work refusal, if the refusal is based on the specimen of record and/or you need additional time to obtain evidence of use on a series of creative works. If you have filed an amendment to allege use (AAU), you may withdraw the AAU; the AAU fee will not be refunded. You may not, however, amend to an intent-to-use basis if you have filed a statement of use (SOU) after a notice of allowance issues; an SOU may not be withdrawn.
NOTE: If you amend to an intent-to-use basis or withdraw an AAU, registration may not be granted until you amend the application back to use in commerce under Section 1(a) by filing an acceptable allegation of use (another AAU or SOU) with (1) a specimen that does not show use merely as a title of a single work but shows proper trademark use, and (2) the required fee. If you submit the same specimen without evidence of use as a series, the trademark examining attorney will issue the same title-of-a-single-work refusal again.
For more information on amending the basis, see 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §§806.03(c), 1103.
TEAS ROA form instructions: Answer "Yes" to form wizard question #2. In the "Classification and Listing of Goods/Services" section, uncheck the box for "Filing Basis Section 1(a), Use in Commerce" and check the box for "Filing Basis Section 1(b), Intent to Use." For technical assistance, contact TEAS@uspto.gov.