Author Services, Inc.

Trademark Trial and Appeal Board

Aug 8, 2003

No. 76227464 (T.T.A.B. Aug. 8, 2003)

Mailed: August 8, 2003
Paper No. 15
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Author Services, Inc.
________
Serial No. 76/227,464
_______
Thomas M. Small and J. Alison Grabell of Birch, Stewart, Kolasch
& Birch, LLP for Author Services, Inc.
Gwen P. Stokols, Trademark Examining Attorney, Law Office 107
(Thomas Lamone, Managing Attorney).
_______
Before Hohein, Bottorff and Holtzman, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Author Services, Inc. has filed an application to
register the designation "BATTLEFIELD EARTH" as a trademark for
"pre-recorded audio tapes and video tapes and pre-recorded
compact discs featuring a series of science fiction books."1
Registration has been finally refused under Sections 1,
2 and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1052 and 1127,
on the ground that as used on the specimens, the designation
"BATTLEFIELD EARTH" does not function as a trademark for
1 Ser. No. 76/227,464, filed on March 20, 2001, which alleges a date of
first use anywhere and in commerce of October 18, 1991.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76/227,464
2
applicant's goods. Instead, according to the Examining Attorney,
such designation is used on the specimens of use as a title of a
single creative work.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
By way of background, applicant asserts in its initial
brief that it "has used and registered its BATTLEFIELD EARTH mark
in numerous ways that lead to the inescapable conclusion that the
mark is a trademark for a variety of goods and services, and not
merely the title of a single creative work." However, with
respect to the instant application, applicant admits that "the
connection between this mark, these goods, and the book and
motion picture entitled 'Battlefield Earth' is not denied."
Applicant also acknowledges that it "is engaged in an extensive
merchandising campaign involving the sale and licensing of
merchandise that arises out of and is based upon various aspects
of the book and motion picture." Applicant nonetheless maintains
that "the purchasing public readily recognizes such merchandising
marks and associates them with a single source," as is the case
herein.
In particular, unlike In re Cooper, 254 F.2d 611, 117
USPQ 396, 398 (CCPA 1958), and other cases cited by the Examining
Attorney which hold that a designation used as the title of
and/or a character name in a book is not registrable as a
trademark for books, applicant stresses that it "is seeking
registration ... for pre-recorded audio tapes and video tapes and
Ser. No. 76/227,464
3
pre-recorded compact discs, not books" (italics in original).
Applicant urges that, in the present case (underlining in
original):
Each of the goods is a separate and
different product. Further, the products
containing "creative works" contain separate
and different works. For example, the
compact disc contains the musical soundtrack
from the motion picture "Battlefield Earth";
the packaged audio edition of the book is an
abridged version narrated by Roddy McDowell;
a special hardcover edition of the book
commemorates the twentieth anniversary of the
book's publication, in addition to the mass-
market paperback version; tee shirts contain
imagery created by various artists ...; and
on-line games that have been available over
the Internet are separate creations. Each of
these works is a separately copyrightable
work. BATTLEFIELD EARTH is not merely the
title. It is, beyond legitimate argument, a
registered trademark owned by Applicant for a
variety of goods and services, and [it is]
also used as a trademark for the goods
identified in this application.
As support for its contentions, applicant relies on the
declaration which it submitted from its Secretary, Ryland
Hawkins, as well as its ownership of two subsisting registrations
for the mark "BATTLEFIELD EARTH." Mr. Hawkins states in his
declaration that, among other things, he has been continuously
employed by applicant for more than 15 years; that, "[i]n
addition to the numerous goods shown in the specimens originally
filed in this application, ...[consisting of] a Books On Tape
(unabridged) audio tape read by Michael Russotto and a Bridge
Publications, Inc. tape cassette (abridged) read by Roddy
McDowell, ... applicant and its licensees have used the
BATTLEFIELD EARTH mark on" the following items:
Ser. No. 76/227,464
4
"a. compact discs containing the
musical soundtrack from the motion picture
entitled 'Battlefield Earth' ...";
"b. DVD and video of the motion picture
entitled 'Battlefield Earth' ...";
"c. a five-volume literary work
constituting the Japanese version of the
original book entitled 'Battlefield Earth'
...";
"d. numerous different paperback
editions of the book entitled 'Battlefield
Earth' using the logo or sold under the
wordmark [sic] ...";
"e. several different leather-bound
editions of the book entitled 'Battlefield
Earth' ..."; and
"f. an edition of 'Starlog Magazine'";
that "[t]he above-identified exhibits show uses of the 'Logo'
form of the mark and also use the 'wordmark' [sic] form of the
mark"; and that "[a]ll of these uses pre-date the filing" of
applicant's application. Applicant also observes that:
[A]s shown in Applicant's existing
registration[s], BATTLEFIELD EARTH already is
registered for: Computer Game Cartridges,
Programs and Screen Saver Programs ...;
Trading Cards, Books and Calendars ...; T-
shirts and Caps ...; and Computer On-line
Services ... (Registration No. 2,376,207);
and Toy and Toy Action Figures ...; and
entertainment services ... (Registration No.
2,532,219) [sic].
The Examining Attorney, on the other hand, correctly
points out in her brief that, under Sections 1, 2 and 45 of the
Trademark Act, it is well settled that "a mark may not be
registered if it is merely the title of a single creative work,"
citing In re Cooper, supra, and In re Caserta, 46 USPQ2d 1088,
1091 (TTAB 1998). Our principal reviewing court, we note,
Ser. No. 76/227,464
5
recently reaffirmed such principle in Herbko International Inc.
v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1379-80 (Fed.
Cir. 2002). The reason why a designation may not be registered
if it is used merely the title of a single creative work, such as
a book, is that, as stated for instance in Caserta, supra,
"titles of books are considered to be nothing more than the name
by which the book may be identified in much the same way that
other items of merchandise are identified." As explained in
Cooper, supra at 399-400 (italics in original), in which the term
"TEENY-BIG" was refused registration as a trademark for books
because it was used solely as the title of a single book:
The purchaser of a book [requested by its
title] is not asking for a "kind" or "make"
of book. He is pointing out which one out of
millions of distinct titles he wants,
designating the book by its name. ....
....
.... But however arbitrary, novel or
non-descriptive of contents the name of a
book--its title--may be, it nevertheless
describes the book. ....
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 name
of the series is not descriptive of any one
book and each book has its individual name or
title. A series name is comparable to the
title of a periodical publication such as a
magazine or newspaper. While it may be
indicative either specifically or by
association in the public mind, of the
general nature of the contents of the
publication, it is not the name or title of
anything contained in it. A book title, on
Ser. No. 76/227,464
6
the other hand[,] especially one which is
coined or arbitrary, identifies a specific
literary work, of whatever kind it may be,
and is not associated in the public mind with
the publisher, printer or bookseller ....
As TEENY-BIG is no more than the name of
a book, its only name, it is not a trademark
under the statute .... Hence, TEENY-BIG was
properly refused registration. ....
In saying that TEENY-BIG is the name of
a book, we note that in this context the term
"book" has a dual aspect. First, it is an
article of manufacture which can be sold in
the marketplace. As such, it is not unlike
blankbooks or pads of paper. Secondly, it
contains, by virtue of the printing on the
paper, an intellectual content which is
incorporeal--the story. The title of the
"book" does not really pertain to the first
aspect at all but identifies, names or
describes the incorporeal literary content,
which is subject to the laws pertaining to
literary property. ....
The same is likewise true with respect to the titles of
plays and movies, see In re Posthuma, 45 USPQ2d 2011, 2013-14
(TTAB 1998) [the name "PHANTASM," used solely as the title of a
play, is not registrable as a service mark for "entertainment
services in the nature of a live theater production"], and would
also be true, by analogy to books, with respect to the titles of
pre-recorded audio tapes, video tapes and compact discs which,
for example, have science fiction books as their subject matter
or contents. As stated in Cooper, supra at 401: "Suffice it to
say that the same principles of law apply to the registration of
trademarks for all kinds of goods." Moreover, as pointed out in
Posthuma, id. at 2014:
To allow registration of play titles and
not book titles would lead to the anomalous
result of registering such titles as
"Ragtime" and ["]Having Our Say" for a single
Ser. No. 76/227,464
7
theatrical production, but not allowing
registration when these same titles are used
as book titles. Titles of plays and book
titles (or, for that matter, movie titles)
are likely perceived in the same manner by
the public, so we see no reason why they
should be treated differently by the [U.S.
Patent & Trademark] Office.
The determination of whether a designation nevertheless
functions as a mark is based upon consideration of its manner of
use as shown by the specimens. Like the appellant in Cooper, the
gist of applicant's argument herein is that because it has used
the designation "BATTLEFIELD EARTH" in connection with the goods
for which it presently seeks registration and has also registered
such designation for a variety of other goods and services which
assertedly are related thereto, it is necessarily the case that
the purchasing public would perceive applicant's manner of use of
"BATTLEFIELD EARTH" as a trademark for its pre-recorded audio
tapes, video tapes, and compact discs which feature a series of
science fiction books. However, as noted in Cooper, it similarly
is the case herein that (italics in original):
Appellant appears to assume that [its
applied-for mark] TEENY-BIG has been used as
a trademark for books in asking that it be
registered, but that is what we have to
decide. Nothing we say should be taken as
implying that no trademark for books can be
registered; but before there can be
registration there must be a trademark and a
trademark exists only where there has been
trademark use.
Id. at 398. Therefore, as generally set forth in In re Bose
Corp., 546 F.2d 893, 192 USPQ 213, 215-16 (CCPA 1976) (italics
Ser. No. 76/227,464
8
in original; citations and footnote omitted):
The Trademark Act is not an act to
register mere words, but rather to register
trademarks. Before there can be
registration, there must be a trademark, and
unless words have been so used they cannot
qualify. ....
An important function of specimens in a
trademark application is ... to enable the
PTO to verify the statements made in the
application regarding trademark use. In this
regard, the manner in which an applicant has
employed the asserted mark, as evidenced by
the specimens of record, must be carefully
considered in determining whether the
asserted mark has been used as a trademark
with respect to the goods named in the
application. ....
Here, as previously indicated, applicant's goods are
identified as "pre-recorded audio tapes and video tapes and pre-
recorded compact discs featuring a series of science fiction
books." As pointed out by the Examining Attorney in her brief,
applicant's goods consequently include "books on tape or compact
disc." "A book on tape or CD," the Examining Attorney further
observes, "is a recorded version of a book read out loud." Thus,
unless the specimens submitted by applicant demonstrate use of
the designation "BATTLEFIELD EARTH" as the name or title of a
series of pre-recorded science fiction books on audio tapes,
video tapes and compact discs, rather than merely as basically
the title of a single creative work, such designation is not
registrable as a trademark for applicant's goods. See, e.g., In
re Scholastic Inc., 23 USPQ2d 1774, 1777-78 (TTAB 1992).
We agree with the Examining Attorney that none of the
specimens submitted by applicant shows use of the designation
Ser. No. 76/227,464
9
"BATTLEFIELD EARTH" as anything other than the title of, in
essence, a single creative work. For example, as illustrated by
the specimens originally filed by applicant, the "BOOKS ON TAPE"
audio tapes consist of a package of "30 CASSETTES" while the
single tape version is packaged in a printed sleeve or box. Most
prominently displayed on both of such specimens is the title of
the pre-recorded book, "BATTLEFIELD EARTH," and the name of the
author of such work, "L. RON HUBBARD." In each instance, and in
significantly smaller size type, there respectively appear above
and below the title the preface "The International Bestseller"
and the legend "Now a Major Motion Picture Starring: JOHN
TRAVOLTA, BARRY PEPPER and FOREST WHITAKER." The only apparent
difference between such specimens is that one version is "READ BY
MICHAEL RUSSOTTO" while the other is "READ BY RODDY MCDOWELL."
In a similar manner, the compact disc specimens
submitted with the Hawkins declaration display, in large size
lettering, the title "BATTLEFIELD EARTH," which is preceded, in
much smaller size type, by the wording "ORIGINAL MOTION PICTURE
SOUNDTRACK." Such specimens also prominently feature the legend
"MUSIC COMPOSED BY ELIA CMIRAL." Along the same lines, both the
DVD and video tape specimens which accompany the Hawkins
declaration prominently feature the title "BATTLEFIELD EARTH,"
which is preceded by the name "JOHN TRAVOLTA" which appears
immediately above such title but in noticeably smaller size type.
Both of such specimens also bear the term "SPECIAL EDITION" and
each appears to be derived from or based upon the book by L. Ron
Hubbard entitled "BATTLEFIELD EARTH." Finally, the printed book
Ser. No. 76/227,464
10
specimens attached to the Hawkins declaration display the titles
of the books as either "BATTLEFIELD EARTH" or a variant thereof,
"Battlefield Earth," together with the name of the author of such
books, "L. Ron Hubbard," while the accompanying edition of
"Starlog Magazine" appears to contain a cover article devoted to
the motion picture made from the book and entitled "BATTLEFIELD
EARTH."
Consequently, as the Examining Attorney accurately
observes in her brief, not only is it the case that "the mark, as
used in connection with the books on tape and CD, is a title,"
but "the evidence demonstrates variations of the same book, not a
series of books" as indicated in the identification of goods set
forth in the application. All of the goods for which applicant
seeks registration of the designation "BATTLEFIELD EARTH" plainly
appear to be based on or derived from the same creative work,
namely, the science fiction book by L. Ron Hubbard which is
entitled "BATTLEFIELD EARTH." Nothing in any of the specimens is
indicative of a series of pre-recorded audio tapes, video tapes
and compact discs, such as a reference to a multi-volume set
(e.g., "Volume 1," "First in a Series," etc.). Furthermore, the
fact that the book entitled "BATTLEFIELD EARTH" has been recorded
by two different readers (Michael Russotto and Roddy McDowell)
and has been made into a motion picture, with a separately
available soundtrack recording, all of which bear the title
"BATTLEFIELD EARTH," does not show that a series of audio tapes,
video tapes and compact discs featuring science fiction books
exists, much less that the designation "BATTLEFIELD EARTH" is a
Ser. No. 76/227,464
11
trademark for such goods rather than simply the title of what is
essentially a single creative work as recorded therein.2 See,
e.g., In re Posthuma, supra at 2014 [while recognizing that "the
nature of live theater dictates that changes will occur from time
to time in a stage production," "the essential story of the play
remains, by and large, intact" and thus, "[w]hatever the changes
made to this live theater production, it still remains a single
work" and the "often subtle changes do not transform the show
into a 'series' of shows, thereby turning the unregistrable title
into a registrable service mark"].
Accordingly, in the absence of specimens showing that
the designation "BATTLEFIELD EARTH" functions as a mark for
applicant's "pre-recorded audio tapes and video tapes and pre-
recorded compact discs featuring a series of science fiction
books" and is not simply the title of essentially a single
creative work, it is not registrable as a trademark for such
goods.
Decision: The refusal to register is affirmed.
2 As the Examining Attorney also properly points out in her brief, "the
only way to overcome such a refusal is to provide evidence that the
mark is used in connection with a series." The refusal herein, she
further notes, is thus unlike a refusal on the ground that a proposed
mark is used on the goods in a decorative or ornamental fashion, which
may be overcome by the presentation of evidence showing that the
proposed mark would be recognized as a mark in light of its use as a
mark in connection with other goods and/or services. Compare TMEP
Section 1202.08 with TMEP Section 1202.03.