Heasley
Dunn
5, 15f Hudis*
This Opinion is Not a
Precedent of the TTAB
Mailed: September 24, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Meredith Madsen
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Serial No. 87054308
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Barry L. Haley of Malin Haley DiMaggio & Bowen, P.A.,
for Meredith Madsen.
Odessa Bibbins, Trademark Examining Attorney, Law Office 118,
Michael W. Baird, Managing Attorney.
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Before Heasley, Dunn and Hudis,
Administrative Trademark Judges.
Opinion by Hudis, Administrative Trademark Judge:
Meredith Madsen (Applicant) seeks registration on the Principal Register of the
mark PREDICTIVE ENTREPRENEUR (in standard characters) for
Education services in the nature of courses at the university level;
Education services, namely, providing tutorial sessions in the field of
business and entrepreneurship; Education services, namely, providing
tutoring in the field of business and entrepreneurship; Business
education and training services, namely, developing customized
leadership and executive development programs, providing executive
coaching services, and providing business education programs to
employees and executives; Continuing education services, namely,
providing live and on-line continuing professional education seminars in
the field of business and entrepreneurship; Leadership development
training in the field of business and entrepreneurship
Serial No. 87054308
in International Class 41.1
The Examining Attorney refused registration under Trademark Act Sections 1, 2,
3, and 45, 15 U.S.C. §§ 1051-1053, 1127, on the ground that Applicants mark
PREDICTIVE ENTREPRENEUR, as shown in Applicants specimen of use, is used
only as the title of a single creative work, namely, the title of a specific live
presentation, an educational course. Therefore, contends the Examining Attorney,
PREDICTIVE ENTREPRENEUR does not function as a service mark to identify and
distinguish Applicants services from those of others and to indicate the source of
Applicants services.
After the Examining Attorney made the refusal final, Applicant appealed to this
Board. Applicant and the Examining Attorney filed briefs. We reverse the refusal to
register.
I. Procedural History
Applicant filed her intent-to-use application to register the PREDICTIVE
ENTREPRENEUR mark for the listed educational services on May 31, 2016. In an
Examiners Amendment issued on September 18, 2016, the Examining Attorney
added the disclaimer upon authorization from Applicants counsel to: No claim is
made to the exclusive right to use Entrepreneur apart from the mark as shown.
1Application Serial No. 87054308 filed on May 31, 2016, under Trademark Act Section 1(b),
15 U.S.C. § 1051(b), based upon Applicants allegation of a bona fide intention to use the
mark in commerce.
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Serial No. 87054308
The PREDICTIVE ENTREPRENEUR application was published for potential
opposition on November 8, 2016, and thereafter the Office issued a Notice of
Allowance on July 4, 2017. Applicant filed her Statement of Use pursuant to
Trademark Act Section 1(d), 15 U.S.C. § 1051(d), on January 3, 2018, claiming a date
of first use and first use in commerce of the mark of August 23, 2016. With her
Statement of Use, Applicant submitted a specimen of use described as a course flyer,
appearing as follows:
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Serial No. 87054308
In the first Office Action of February 5, 2018, refusing registration, the Examining
Attorney stated: the applied-for mark, PREDICTIVE ENTREPRENEUR, as used
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Serial No. 87054308
on the specimen of record, is used only as the title of a single creative work, namely,
the title of a specific live presentation, a course; it does not function as a service
mark to identify and distinguish applicants services from those of others and to
indicate the source of applicants services.2 In support of the refusal, in addition to
Applicants specimen, the Examining Attorney made of record the following online
press release3 from Florida Atlantic University, where Applicant is a course
instructor:
2Office Action of February 5, 2018 at TSDR 2. Page references to the application record refer
to the online database of the USPTOs Trademark Status & Document Retrieval (TSDR)
system to the downloadable .pdf versions of the documents. References to the briefs on
appeal refer to the Boards TTABVUE docket system. Before the TTABVUE designation is
the docket number; coming after this designation are the page references, if applicable.
3 Id. at TSDR 4-6.
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Serial No. 87054308
When making this online press release a part of the record, the Examining
Attorney was required to provide complete information as to the date the evidence
was published or accessed from the Internet, and its source (e.g., the complete URL
address of the website). Because the Examining Attorney did not do so, this material
normally would not have been considered. In re I-Coat Co., 126 USPQ2d 1730, 1733
(TTAB 2018). However, Applicant failed to object to this evidence. We thus consider
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Serial No. 87054308
this online press release for whatever probative value it may have. See In re Mueller
Sports Medicine, Inc., 126 USPQ2d 1584, 1587 (TTAB 2018).
In her August 6, 2018 response to the first Office Action, Applicant states:
Applicant has provided at least seven different lectures covering different
subject matter in each lecture using the mark for educational services.
The different course content for seven different lectures indicates that
the mark is used for educational services and is a series, not a single
work.4
Applicant followed up her response on August 16, 2018 by filing a Declaration
under oath stating:
2. I make this declaration in support of the above-referenced application
in the belief that my educational services listed in the application were
not for a single work.
3. As Applicant, I provided at least seven different lectures for the
educational services recited in this application with different subject
matter for each lecture relating to the mark Predictive Entrepreneur.
[T]he different course content indicates that the educational services
provided by applicant is a series.5
In the final Office Action of October 8, 2018, the Examining Attorney maintained
the refusal, but neither added more to the record nor inquired further as to the nature
of the services offered in connection with the mark.
II. Applicable Law
Trademark Act Section 2, 15 U.S.C. § 1052, provides that [n]o trademark by
which the goods of the applicant may be distinguished from the goods of others shall
be refused registration on the principal register on account of its nature unless the
4 Response of August 6, 2018 at TSDR 4.
5Applicants Declaration filed by way of Post-Publication Amendment of August 16, 2018 at
TSDR 4.
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Serial No. 87054308
refusal is based on an applicable statutory ground. Trademark Act Section 3, 15
U.S.C. § 1053, states that [s]ubject to the provisions relating to the registration of
trademarks, so far as they are applicable, service marks shall be registrable, in the
same manner and with the same effect as are trademarks . Further, [t]he Patent
and Trademark Office (PTO) bears the burden of establishing that a proposed mark
is [unregistrable]. Cf. In re Cordua Rests., Inc., 823 F.3d 594, 600, 118 USPQ2d 1632,
1635 (Fed. Cir. 2016); see also In re Arnold, 105 USPQ2d 1953, 1956 (TTAB 2013)
(Reversing refusal on grounds that proposed mark was the title of a single work:
Because the record does not clearly indicate that the content of the two [specimens]
is the same, we give the applicant the benefit of the doubt that they contain different
content.).
The title of a single creative work, such as a book, is not considered a trademark,
and is therefore unregistrable. Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§
1051, 1052, and 1127; In re Cooper, 254 F.2d 611, 117 USPQ 396, 400 (CCPA 1958).
The policy for this is clear. Because a trademark can endure for as long as the
trademark is used, at the point that copyright protection ends and others have the
right to use the underlying work, they must also have the right to call it by its name.
Mattel, Inc. v. Brainy Baby Co., LLC, 101 USPQ2d 1140, 1144 (TTAB 2011).
The Federal Circuit Court of Appeals has confirmed, this courts case law
prohibits proprietary rights for single book titles. Herbko Intl, Inc. v. Kappa Books,
Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002), and the Board has
followed suit. E.g., In re Arnold, 105 USPQ2d at 1954 (It is well settled that the title
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of a single creative work is not considered a trademark and is, therefore,
unregistrable .); Mattel, Inc. v. Brainy Baby Co., LLC, 101 USPQ2d at 1144 (The
case law is clear that parties cannot gain trademark rights in titles of [individual]
works .); In re Hal Leonard Publg Corp., 15 USPQ2d 1574 (TTAB 1990) (INSTANT
KEYBOARD unregistrable as the title of single book featuring musical keyboard
instruction).
In In re Posthuma, 45 USPQ2d 2011, 2014 (TTAB 1998), we affirmed the Offices
extension of the title of a single work refusal from applying only to books to applying
to a live theatrical production, and thus the refusal to register the mark PHANTASM
for a live theater production. After reviewing relevant precedent upholding the denial
of registration for single book titles, we said:
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 [we] discussed
, is unregistrable.
***
We recognize that the nature of live theater dictates that changes will
occur from time to time in a stage production. Nonetheless,
, 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 turning the
unregistrable title into a registrable service mark.
***
To allow registration of play titles and not book titles would lead to
the anomalous result of registering
titles
for a single theatrical
production, but not allowing registration when these same titles are
used as book titles. [W]e see no reason why they should be treated
differently by the Office. (Emphasis added).
Id. 45 USPQ2d at 2013-14.
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III. Analysis
Relying on Posthuma and Applicants specimen of use, the course flyer, the
Examining Attorney asserts the educational course that Applicant is offering in
connection with the Florida Atlantic University School of Business under the mark
PREDICTIVE ENTREPRENEUR is but one course in a series of other courses (e.g.,
DISRUPTIVE TECHNOLOGY and HOW TO ESTABLISH FOREIGN BUSINESS),
on the broader topic of entrepreneurship, and will be perceived as the title of a single
work.6
We disagree with the Examining Attorneys premise that Applicants educational
services comprise a single creative work. Single creative works include works in
which the content does not change, whether that work is in printed, recorded, or
electronic form. A theatrical performance is a single creative work because the
content of the play, musical, opera, or similar production does not significantly change
from one performance to another. In re Posthuma, 45 USPQ2d at 2014; TRADEMARK
MANUAL OF EXAMINING PROCEDURE (TMEP) §1202.08(a) (2019).
Educational services such as university courses are different from scripted
theatrical performances. In fact, the TMEP specifies that [l]ive performances by
musical bands, television and radio series, and educational seminars are
presumed to change with each presentation and, therefore, are not single creative
works. TMEP § 1202.08(b) (emphasis added).
6 Examining Attorneys Brief, 6 TTABVUE 4.
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Serial No. 87054308
In this case, Applicant avers that she has provided at least seven different
lectures for the educational services recited in this application with different subject
matter for each lecture relating to the mark Predictive Entrepreneur.7 This
averment is unchallenged. In sum, we find that the Examining Attorney did not meet
her burden regarding the refusal to register on the ground that the mark is used only
as the title of a single creative work.
IV. Decision
The refusal to register Applicants mark PREDICTIVE ENTREPRENEUR
pursuant to Trademark Act Sections 1, 2, 3, and 45, is reversed.
7Applicants Declaration filed by way of Post-Publication Amendment of August 16, 2018 at
TSDR 4.
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