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  • The title of a series of works may function as a trademark for the entire series.
    • Kappa Books, Inc. v. Herbko International, Inc., Cancellation No. 26,378, (TTAB 2001).
      • It is well established, and respondent does not disagree, that a title that is the name of a series of works may function as a trademark for that series. See In re Cooper, 254 F.2d 611, 117 USPQ 396 (CCPA 1958); and In re Scholastic Inc., 223 USPQ 431 (TTAB 1984).
  • The title of a single work is descriptive and not registerable as a trademark; unlike a series name (which is registerable), because the series name serves a trademark function of indicating that each book in the series comes from the same source.
    • Kappa Books, Inc. v. Herbko International, Inc., Cancellation No. 26,378, (TTAB 2001).
      • Rather, we have a title of a series of books.4[4] While the title of a single work does not function as a trademark and has been described as merely descriptive of the contents of that work, the Court in In re Cooper, supra, found that a series is quite different from a single title, stating the following: "Appellant appears to argue that there is an inconsistency in registering as a trademark the name for a series of books and in not registering the title of a single book. We see no inconsistency. 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 use of the mark in connection with the series dates back to the beginning of the series, i.e., the date of sale of the first "volume" of the series.
    • Kappa Books, Inc. v. Herbko International, Inc., Cancellation No. 26,378, (TTAB 2001).
      • Petitioner's crossword puzzle books constitute a series of books which, logically, must begin with the publication of the first book in the series. As a result, the use of the mark in connection with the series dates back to the beginning of the series, i.e., the date of sale of the first "volume" of the series. Nothing in Cooper is to the contrary.
  • The reasoning behind granting a series trademark right when first used is similar to the reasoning behind "analogous use" cases where non-technical trademark use of a term creates an inchoate right that its owner may perfect upon making a technical trademark use of the term, so long as the analogous use is of such a nature and extent that it creates a proprietary right in the user deserving of protection, and the technical use is commenced within a reasonable time.
    • Kappa Books, Inc. v. Herbko International, Inc., Cancellation No. 26,378, (TTAB 2001).
      • Respondent argues, however, that the series, and thus the use of the title as a trademark, does not arise until such time as a second "volume" is sold. In this regard, we stated the following: "This case is not unlike an "analogous use case," where non-technical trademark use of a term creates an inchoate right that its owner may perfect upon making a technical trademark use of the term, so long as the analogous use is of such a nature and extent that it creates a proprietary right in the user deserving of protection, and the technical use is commenced within a reasonable time. See Era Corp. v. Electronic Realty Associates, Inc., 211 USPQ 734, 745 (TTAB 1981); and Dyneer Corporation v. Automotive Products, plc, 37 USPQ2d 1251 (TTAB 1995). Petitioner's initial shipments to WalMart in 1993 were sufficient to create such proprietary rights, since they were in fact followed by shipments of additional sets of books in 1995."
  • The Towers case is not applicable to a series mark insofar as the issue of a series mark does not pertain to the name of a single product or describe a characteristic of a product.
    • Kappa Books, Inc. v. Herbko International, Inc., Cancellation No. 26,378, (TTAB 2001).
      • We find Towers to be inapposite to the present situation. That case pertained to the use by petitioner of THE PROFESSIONAL PORTFOLIO SYSTEM in connection with a computer based portfolio valuation system, not as the title of either a single work or a series. In the case before us, we do not have a term that is the name of a product or merely describes a quality or characteristic of a product.
  • Case Finding: Per Towers, a petitioner's Section 2(d) claim will fail if the petitioner's unregistered mark was merely descriptive, and thus not inherently distinctive, and petitioner had not shown that his term had become distinctive of his goods prior to respondent's first use of its mark.
    • Kappa Books, Inc. v. Herbko International, Inc., Cancellation No. 26,378, (TTAB 2001).
      • In its request for reconsideration, respondent bases its argument, by analogy, on Towers v. Advent Software Inc., 913 F.2d 942, 16 USPQ2d 1039 (Fed. Cir. 1990). In that case, the court affirmed the Board's decision, based on Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981), that petitioner's Section 2(d) claim failed because petitioner's unregistered mark was merely descriptive, and thus not inherently distinctive, and petitioner had not shown that his term had become distinctive of his goods prior to respondent's first use of its mark.
Kappa Books, Inc. v. Herbko International, Inc., Cancellation No. 26,378, (TTAB 2001) Grand Total
Dyneer Corp. v. Automotive Products plc, 37 USPQ2d 1251 (TTAB 1995) 1
Towers v. Advent Software Inc., 913 F.2d 942, 16 USPQ2d 1039 (Fed. Cir. 1990) 1
In re Scholastic Inc., 223 USPQ 431 (TTAB 1984) 1
Era Corp. v. Electronic Realty Associates Inc., 211 USPQ 734 (TTAB 1981) 1
Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981) 1
In re Cooper, 117 USPQ 396 (CCPA 1958) 1
Grand Total 6 6
No Statutes Listed.