Trademark refusal: Title of a single creative work

Your trademark won’t register if it’s only used as the title of a single creative work. However, if your trademark is the name or title of a series of creative works, it may register. You need to provide evidence that shows the title is being used for the entire series, not just one creative work in the series.

For example, the book title "The Tipping Point" identifies a single book and the film title "The Manchurian Candidate" identifies a single movie. However, C.S. Lewis’ "The Chronicles of Narnia" books, National Public Radio’s "All Things Considered" radio programs, and "The Twilight Saga" films are each a series because they identify more than one creative work under that name.

Similarly, your trademark won’t register if it’s only used as a portion of a title of a single creative work. For example, the title portion "The Magic School Bus" that’s in the book title "The Magic School Bus: Going on a Field Trip" is considered a portion of a title. But, a portion of a title of a single creative work may be registerable if the name of a portion of a title:

Identifies that the title portion is being used for a series of creative works;
Creates a commercial impression that’s different from the complete title; and
Is promoted and recognized as a source-indicator for the series.

For more information, see TMEP section 1202.08.

Definition of a single creative work

A single creative work is one, individual work in which the content does not change significantly, whether that work is in printed, recorded, or electronic form; provided live on stage or in a live performance, or merely translated into different languages.

Examples:

A single book in all media formats
A single book provided in English- and Spanish-language versions
A single sound recording, downloadable song, downloadable ring tone, DVD, and audio CD
A single film or movie
A single creative work issued in sections or chapters
A single creative work that uses the same title in different media formats (e.g., a printed and electronic book) or on unabridged and abridged versions of the same work
Theatrical performances such as a play, musical, opera, or similar production
A single radio or television episode

For more information, see TMEP section 1202.08(a).

Definition of a series of creative works

Generally, a series of creative works is a type of work in which the content changes significantly with each edition, issue, or performance.

Examples:

Periodically issued publications such as magazines, newsletters, comic books, comic strips, guide books, and printed classroom materials
A book with a second or subsequent edition in which the content changes significantly (such as a jacket cover for a cookbook that states it’s "new and revised")
Live performances by musical bands
Television and radio series
Movies and films that are provided as a series
Educational seminars
Computer software and computer games
Coloring books and activity books

For more information, see TMEP section 1202.08(b)–(c), (d)(ii).

Evidence showing use for a series

Provide evidence to show that your trademark is being used as the name, title, or title portion for a series of creative works. Evidence typically consists of photographs, screen printouts or captures, point-of-sale displays, download links, and advertising. However, the use of a title of a book, for example, on collateral goods, such as posters, mugs, or t-shirts, does not establish a series, as those other goods are not books.

The examples below show how a name, title, or portion-of-a-title can be used for a series of creative works.

Downloadable books (International Class 9)

Title portion NINJANGO® appears on a point-of-sale webpage display showing use on two different digital book covers of the series.

Example one showing how the title portion Ninjago appears on a point-of-sale webpage for one book in the Ninjago book series. The book is The Rescue Mission.

Example two showing how the title portion Ninjago appears on a point-of-sale webpage for one book in the Ninjago book series. The book is How to be a Ninja.

Recorded DVDs (International Class 9)

Film title THE CHRONICLES OF NARNIA® (first example) and RUSH HOUR® (second example) shown on DVD jacket covers for two different titles in a film series.

First example showing how the film title portion The Chronicles of Narnia appears for one of the films in the series. The film is The Lion, The Witch, and The Wardrobe.

Second example showing how the film title portion The Chronicles of Narnia appears for one of the films in the series. The film is The Voyage of the Dawn Treader.

First example showing how the film title portion Rush Hour appears for one of the films in the series. The film is Rush Hour.

Second example showing how the film title portion Rush Hour appears for one of the films in the series. The film is Rush Hour 2.

Prerecorded audio CDs (International Class 9)

Title THE 20/20 EXPERIENCE® used on two CD album covers showing use on a series for musical recordings.

First example showing one way the album title appears on a CD album cover. The album cover is in silver.

Second example showing a different way the album title appears on a CD album cover. The album cover is in gold.

Printed books (International Class 16)

The title THE CHRONCILES OF NARNIA® shown on a box set for a series of books.

An example of a title portion being used on the cover of a box set for a series of books. Each book in the set has its own book-specific title.

Two book covers showing the title of a book series. DIARY OF A WIMPY KID®.

Second example showing a different way the book title for the series Diary of a Wimpy Kid appears on one book in the series. The book cover is blue and the title is gold and red.

The book covers show the portion of a title THE COMPLETE IDIOT’S GUIDE TO® used on a series.

First example showing the title portion The Complete Idiot’s Guide books series for one book in the series. The book is titled Computer Basics.

Second example showing the title portion The Complete Idiot’s Guide books series for one book in the series. The book is titled Organizing Your Life.

Podcasts and radio program services (International Class 41)

Title SERIAL® shown on webpage advertising as a title of a series of non-downloadable podcasts.

Example showing how a title for a podcast series is advertised. The podcast title is Serial.

DISCLAIMER: References to particular trademarks, service marks, certification marks, products, services, companies, or organizations appearing on this page are for illustrative and educational purposes only and do not constitute or imply endorsement by the U.S. government, the U.S. Department of Commerce, the U.S. Patent and Trademark Office, or any other federal agency.

Additional evidence required for portion-of-a-title

In addition to providing evidence showing use of the portion-of-a-title for a series of creative works (see TMEP section 1202.08(d)(ii)), you must do both of the following:

Provide evidence that a portion-of-a-title creates a separate commercial impression apart from the complete title. For more information, see TMEP section 1202.08(d)(i).

Example. The trademark THE LITTLE ENGINE is used as a portion-of-a-title for a series of books, with specimens showing the title on two different book covers as THE LITTLE ENGINE THAT WENT TO THE FAIR and THE LITTLE ENGINE THAT WENT TO SCHOOL. The wording THE LITTLE ENGINE creates a separate commercial impression from the rest of the title because it appears on the cover as separate from the rest of the wording in the title, and this wording is shown more prominently in a larger and bolder lettering style.
Provide evidence that a portion-of-a-title is promoted and recognized as a source indicator for the series. For more information, see TMEP section 1202.08(d)(iii).

Examples. Evidence of promotion or recognition as a trademark for a series includes advertising materials showing the series being promoted by the title portion (e.g., “Travel with ‘THE LITTLE ENGINE’ series!”); third-party reviews showing use of the title portion to refer to the series; and declarations from consumers such as retailers and purchasers showing recognition of the title portion as a source indicator for the series.

Examples of additional evidence

Prerecorded DVDs (International Class 9)

DVD cover and box set show the PIRATES OF THE CARIBBEAN® series title:

Being promoted as a source-indicator for the series.
Creating a separate commercial impression from the complete title on each DVD cover (e.g., the title “THE PIRATES OF THE CARIBBEAN THE CURSE OF THE BLACK PEARL”) and from the complete titles of the movies listed on the side of the box set.
Being shown more prominently than the other wording in the complete titles.
Is part of a series of movies, as seen in the box set.

Example showing the series title for the Pirates of the Caribbean movies in bigger letters than the movie-specific title of The Curse of the Black Pearl on a DVD cover.

Example showing the series title for the Pirates of the Caribbean movies on the side of a box set of all of the movies in the series.

Printed books (International Class 16)

The book covers show the portion of a title FOR DUMMIES® used on a series. These covers also show that this title portion creates a separate commercial impression from the complete title as the wording FOR DUMMIES® appears in a different font and slightly separated from and below the rest of the book title. The webpage explaining about the series shows FOR DUMMIES® is promoted and recognized as a source-indicator for the series.

Example showing how the portion title For Dummies is used on the cover of one book in the book series. The book-specific title is Latin.

Example showing how the portion title For Dummies is used on the cover of one book in the book series. The book-specific title is Writing Fiction.

Example of a webpage for the series showing how For Dummies is promoted as a series and not as an individual book.

The box set shows that the title portion RAMONA® is used for a series and creates a separate commercial impression from the complete title of the books (e.g., BEEZUS AND ROMONA, RAMONA THE PEST, RAMONA THE BRAVE). The point-of-sale webpage shows RAMONA® is promoted and recognized as a source-indicator for the book series.

Example showing the series portion title for the Ramona books on the side of a box set of all of the books in the series. Each book in the set also has a book-specific title.

Example webpage showing that Ramona is promoted as a source-indicator for all the books in the series.

Radio program services (International Class 41)

Webpage advertising shows that the title portion THE NATIONAL CONVERSATION® is promoted and recognized as a source-indicator for the radio series, and creates a separate commercial impression from the complete title, which you can see through the repetition of “On this broadcast of 'The National Conversation' ... ” on the webpage. The episode list and characterization of the radio program as a “special series” show use as a series.

Example of a webpage advertising that the title portion The National Conversation is a source-indicator for the radio series, and not a title for a specific episode in the series.

Response options for overcoming a refusal

There are several possible response options to overcome the refusal, some of which are discussed below. Not all options may be applicable to your specific situation. Review your office action carefully to determine which, if any, of these options may apply.

Response options for title of a single work refusal

To overcome this refusal, you can do one of the following:

Provide evidence showing use of the title for a series of creative works

TEAS instructions to provide evidence

Follow the “how to respond” link in your office action to open the appropriate TEAS form.
Answer “Yes” to question 1. Review the remaining question(s) and select the “Yes” or “No” radio buttons, as appropriate.
In the "Argument(s)" section, use the "Click here to Enter Argument(s)" button to enter arguments as to why the trademark is eligible for registration.
In the "Evidence" section, use the “Click here to Attach Evidence” button to upload your evidence for use as a series as JPG/PDF files. You may enter a description of your evidence in the text box below the attach button.

Change the basis of the application to intent to use, or withdraw an amendment to allege use, if one was submitted

Use this response option if either of these are true:

Your application is based on use in commerce under Trademark Act Section 1(a).
You submitted an amendment to allege use (AAU). If you’ve filed an AAU, you may withdraw it; however, the AAU fee will not be refunded.

This response option gives you additional time to obtain evidence showing use of your trademark for a series of creative works.

If you change the filing basis to intent to use, registration won’t be granted until you file an acceptable allegation of use (an AAU or statement of use (SOU)) that includes a proper specimen and the required fee. If you submit the same specimen without evidence of use as a series or additional evidence of the wording as a portion-of-a-title for a series, the trademark examining attorney will issue the same title-of-a-single-work refusal again.

TEAS instructions to change the basis to intent to use

Follow the “how to respond” link in your office action to open the appropriate TEAS form. Review the remaining question(s) and select the “Yes” or “No” radio buttons, as appropriate.
Answer “Yes” to question 2.
Under the "Classification and Listing of Goods/Services/Collective Membership Organization” section, do the following for each relevant class for which the basis is being amended:
1. Select "Check here to modify the current classification number; listing of goods/services; dates of use; and/or filing basis; or to submit a substitute specimen or foreign registration certificate. If not checked, the changes will be ignored."
2. Uncheck the box for "Filing Basis Section 1(a), Use in Commerce."
3. Check the box for "Filing Basis Section 1(b), Intent to Use."

TEAS instructions to withdraw the AAU

Follow the “how to respond” link in your office action to open the appropriate TEAS form.
Answer “Yes” to question 3. Review the remaining question(s) and select the “Yes” or “No” radio buttons, as appropriate.
In the "Additional Statement(s)" section, also check "Miscellaneous Statement," and enter in the text field "Applicant withdraws the amendment to allege use.”

Delete the refused goods or services from the application, if the refusal is limited to particular goods or services (a partial refusal)

Once you delete the refused goods or services, the refusal will be withdrawn. However, you can’t reinsert the deleted goods or services later.

TEAS instructions to delete goods or services

Follow the “how to respond” link in your office action to open the appropriate TEAS form.
Answer “Yes” to question 2. Review the remaining question(s) and select the “Yes” or “No” radio buttons, as appropriate.
Under the "Classification and Listing of Goods/Services/Collective Membership Organization” section, do the following for each relevant class for which the basis is being amended:
1. Select "Check here to modify the current classification number; listing of goods/services; dates of use; and/or filing basis; or to submit a substitute specimen or foreign registration certificate. If not checked, the changes will be ignored."
2. Under “Listing of Goods/Services/Collective Membership Organization,” remove the goods and or services in the text box that you want to delete.

Response options for portion-of-a-title of a single work refusal

To overcome this refusal, you can do one of the following:

Provide three types of evidence

You must provide all three of the following types of evidence:

Show the portion-of-the-title is used for a series of creative works.
Demonstrate that the portion-of-a-title creates a separate commercial impression from the complete title.
Demonstrate that the portion-of-a-title is promoted and recognized as a source-indicator for the series.

TEAS instructions for attaching evidence

Follow the “how to respond” link in your office action to open the appropriate TEAS form.
Answer “Yes” to question 1. Review the remaining question(s) and select the “Yes” or “No” radio buttons, as appropriate.
In the "Argument(s)" section, use the "Click here to Enter Argument(s)" button to enter arguments as to why the mark is eligible for registration.
In the "Evidence" section, use the “Click here to Attach Evidence” button to upload your evidence of use as a series as JPG/PDF files. You may enter a description of your evidence in the text box below.

Change the basis of the application to intent to use, or withdraw an amendment to allege use, if one was submitted

Use this response option if either of these are true:

Your application is based on use in commerce under Trademark Act Section 1(a).
You submitted an amendment to allege use (AAU). If you filed an AAU, you may withdraw it; however, the AAU fee won’t be refunded.

This response option gives you additional time to obtain evidence showing use of your trademark for a series of creative works.

If you change the filing basis to intent to use, registration won’t be granted until you file an acceptable allegation of use (an AAU or statement of use (SOU)) that includes a proper specimen and the required fee. If you submit the same specimen without evidence of use as a series (and any additional evidence for portion-of-a-title), the trademark examining attorney will issue the same title of single work refusal again.

TEAS instructions to change the basis to intent to use

Follow the “how to respond” link in your office action to open the appropriate TEAS form.
Answer “Yes” to question 2. Review the remaining question(s) and select the “Yes” or “No” radio buttons, as appropriate.
Under the "Classification and Listing of Goods/Services/Collective Membership Organization” section, do the following for each relevant class for which the basis is being amended:
1. Select "Check here to modify the current classification number; listing of goods/services; dates of use; and/or filing basis; or to submit a substitute specimen or foreign registration certificate. If not checked, the changes will be ignored."
2. Uncheck the box for "Filing Basis Section 1(a), Use in Commerce."
3. Check the box for "Filing Basis Section 1(b), Intent to Use."

TEAS instructions to withdraw the AAU

Follow the “how to respond” link in your office action to open the appropriate TEAS form.
Answer “Yes” to question 3. Review the remaining question(s) and select the “Yes” or “No” radio buttons, as appropriate.
In the "Additional Statement(s)" section, also check "Miscellaneous Statement," and enter in the text field "Applicant withdraws the amendment to allege use.