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.
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, or provided live on stage or in a live performance.
- A single book in all media formats
- 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
Generally, a series of creative works is a type of work in which the content changes significantly with each edition, issue, or performance.
- 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
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.
There are several possible response options to overcome the refusal. 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.