Mattel, Inc.v.The Brainy Baby Company, LLC

Trademark Trial and Appeal Board

Dec 30, 2011

No. 92052047 (T.T.A.B. Dec. 30, 2011)

Baxley Mailed: December 30, 2011

Cancellation No. 92052047

Mattel, Inc.

v.

The Brainy Baby Company, LLC

Before Seeherman, Ritchie, and Wolfson,
Administrative Trademark Judges.

By the Board:

The Brainy Baby Company, LLC ("respondent") owns a
registration for the mark LAUGH & LEARN and design in the
following form,

for a "series of prerecorded videotapes, audio cassettes,
digital video discs and compact discs featuring live and
animated educational materials intended to develop and
improve the creative and intellectual faculties of infants
and children" in International Class 9.1

1 Registration No. 3214699, issued March 6, 2007, based on an
application that was filed July 21, 2004, and alleging February
15, 2004 as the date of first use anywhere and date of first use
in commerce. The registration includes a disclaimer of LEARN.
In the application for such registration, respondent initially
sought registration of the mark on the Supplemental Register;
respondent, however, amended the application to one seeking
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
This Decision is a Precedent
of the Trademark Trial and Appeal
Board
Cancellation No. 92052047
2
On February 5, 2010, Mattel, Inc. ("petitioner") filed
a petition to cancel respondent's registration on the
following two grounds: (1) that, when respondent filed the
application for the involved registration, the registered
mark was not in use for a series of goods and was instead
only the title of a single creative work; and (2) likelihood
of confusion with petitioner's previously used mark LAUGH &
LEARN for "developmental toys for infants; [and] infant
toys," Trademark Act Section 2(d), 15 U.S.C. Section
1052(d). Respondent, in its answer, denied the salient
allegations of the petition to cancel.
On December 22, 2010, petitioner filed a motion for
leave to file an amended petition to cancel, under Fed. R.
Civ. P. 15(a), to add a claim of abandonment, and to extend
the discovery period. Following full briefing of that
motion, which remains pending,2 petitioner, on February 22,
2011, filed a motion for summary judgment on its initial
claim that the mark was not in use as a trademark when
respondent filed its application, because the involved mark
"was being used by [respondent] only as the title for a
single creative work, and not as the title for a series of
works." Petition to cancel, paragraph 6.

registration on the Principal Register on March 11, 2005, during
ex parte examination of the application.
2 On April 12, 2011, the Board issued an order suspending this
proceeding retroactive to December 22, 2010.

Cancellation No. 92052047
3
We will first consider the motion for summary judgment.
As an initial matter, petitioner's reply brief in support of
such motion is twenty-two pages long, consisting of a table
of contents page, a two-page table of authorities, and
nineteen pages of text. As such, it exceeds the ten-page
limit for reply briefs in support of motions and has
therefore received no consideration. See Trademark Rule
2.127(a). See also Saint-Gobain Corp. v. Minnesota Mining
and Mfg. Co., 66 USPQ2d 1220 (TTAB 2003).3 We have,
however, treated as rebuttal evidence the CD-ROM copy of the
VHS tape and the DVD that opposer submitted as exhibits to
that reply brief, and therefore considered them.
Summary judgment is an appropriate method of
disposing of a case in which there is no genuine dispute as
to any material fact, thus leaving the case to be
resolved as a matter of law. See Fed. R. Civ. P. 56(c).
A dispute as to a material fact is genuine only if a
reasonable fact finder viewing the entire record could
resolve the dispute in favor of the nonmoving party. See
Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22
USPQ2d 1542, 1544 (Fed. Cir. 1992). In deciding a motion
for summary judgment, the Board must view the evidence in
the light most favorable to the nonmovant, and must draw all

3 Although respondent did not file a motion to strike the reply
brief on the basis of its excessive length, the length
limitations for briefs are set in the rules, and cannot be waived
Cancellation No. 92052047
4
reasonable inferences from underlying facts in favor of the
nonmovant. Id.
For the Board to grant summary judgment, petitioner
must establish that there is no genuine dispute as to its
standing and as to the ground on which it seeks entry of
summary judgment. See Fed. R. Civ. P. 56(a). See also
Cunningham v. Laser Golf Corp., 222 F.3d 943, 945, 55 USPQ2d
1842, 1844 (Fed. Cir. 2000). Such standing is established
by petitioner's submission, as an exhibit to its brief in
support of the motion for summary judgment, of a copy of the
application file of petitioner's pleaded application Serial
No. 78525119 for the mark LAUGH & LEARN in standard
character form for "developmental toys for infants; infant
toys" in International Class 28. The Office action in that
file shows that such application was refused registration
under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d),
based on respondent's involved registration. See
Weatherford/Lamb Inc. v. C&J Energy Services Inc., 96 USPQ2d
1834 (TTAB 2010). By virtue of the refusal to register
petitioner’s pending application, there is no genuine
dispute that petitioner has standing to bring the current
proceeding.
The substantive issue before the Board on this motion
is whether respondent was using the mark for a series at the

even by agreement of the parties. See Saint-Gobain Corp. v.
Cancellation No. 92052047
5
time it filed its application. As respondent itself has put
it, "the only issue before the Board is whether
[respondent's] use of the mark in connection with both a
video tape and DVD constitutes use [of] the mark for a
'series of prerecorded videotapes, audio cassettes, digital
video discs and compact discs featuring live and animated
educational materials intended to develop and improve the
creative and intellectual faculties of infants and
children.'" Brief in opposition at 6 (emphasis in original).
The title of a single creative work is not considered a
trademark, and is therefore unregistrable on the Principal
Register under Trademark Act Sections 1, 2, and 45, 15
U.S.C. Sections 1051, 1052, and 1127. See In re Cooper, 254
F.2d 611, 117 USPQ 396 (CCPA 1958) ("Cooper"). The title of
a single creative work is, of necessity, descriptive of the
work and does not function as a trademark. See In re
Scholastic Inc., 223 USPQ 431, 431 (TTAB 1984) ("Scholastic
I"). On the other hand, if a term has been used to identify
the source of a series of creative works, it functions as a
trademark, and the fact that it may also be included in the
title of each work does not destroy its source-originating
function. See In re Scholastic Inc., 23 USPQ2d 1774, 1776
(TTAB 1992) ("Scholastic II"); TMEP Section 1202.08 (8th ed.
2011).

Minnesota Mining and Mfg. Co., supra.
Cancellation No. 92052047
6
In Cooper, the Court of Customs and Patent Appeals, the
predecessor to the Court of Appeals for the Federal Circuit,
found that the proposed mark, TEENY-BIG for children's
books, was not a trademark and was instead a descriptive
name of the book in question. Cooper, 117 USPQ at 399-400.
The court noted that, unlike copyright protection,
[t]he protection accorded the property right in a
trademark is not limited in time and endures for
as long as the trademark is used. ...
[E]ventually all books fall into the public
domain. The right to copy which the law
contemplates includes the right to call the copy
by the only name it has and the title cannot be
withheld on any theory of trademark right therein.

Id. at 400. By contrast,
[t]he 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.

Id. (emphasis added). See also Scholastic II, 23 USPQ2d at
1776.
In subsequent cases, the Board and our primary
reviewing court both have followed this policy and affirmed
the refusal of registration of titles of single creative
works. See Herbko Int'l Inc. v. Kappa Books Inc., 308 F.3d
1156, 64 USPQ2d 1375 (Fed. Cir. 2002) (petitioner found not
to have proprietary rights in CROSSWORD COMPANION for a
series of crossword puzzle books at time respondent filed
Cancellation No. 92052047
7
its involved application because petitioner did not publish
its second volume of such books until after respondent’s
first use); In re Posthuma, 45 USPQ2d 2011 (TTAB 1998)
(PHANTASM unregistrable as the title of a theater
production, notwithstanding that there were necessarily some
variations stemming from the fact that each performance of
that production was live); In re Hal Leonard Publ’g Corp.,
15 USPQ2d 1574 (TTAB 1990) (INSTANT KEYBOARD unregistrable
as the title of single book featuring musical keyboard
instruction); Scholastic I at 431 (in finding THE LITTLES
unregistrable for a series of educationally oriented
children's books which included "The Littles" as a portion
of the titles, the Board stated that "The Littles would be
viewed only as the identity of the characters in the title
of each book and not as a trademark for a series of books");
In re Appleby, 159 USPQ 126 (TTAB 1968) (HYPNO-SMOKE
unregistrable as the title of a single phonograph record
featuring a lecture on smoking cessation); In re National
Council Books, Inc., 121 USPQ 198 (TTAB 1959) (NATIONAL
GARDEN BOOK unregistrable as the title of a single book,
notwithstanding that applicant published other books having
the term NATIONAL as part of the titles, e.g., NATIONAL COOK
BOOK and NATIONAL FLOWER ARRANGING BOOK). But see
Scholastic II, supra (THE MAGIC SCHOOL BUS registrable for a
series of children's books; distinguished from Scholastic I
Cancellation No. 92052047
8
in that prominent display of the mark THE MAGIC SCHOOL BUS
created a separate commercial impression from the titles of
the books at issue).
There is no genuine dispute that respondent sells, and
had sold at the time it filed its underlying application, a
VHS tape and a DVD using LAUGH & LEARN only as the title of
each product. Nor is there any genuine dispute as to the
content of each. Both the VHS and DVD versions are of
record, submitted by petitioner as exhibits to its reply
brief.4
We have reviewed these submissions and could not
identify any differences in the content of the featured
program in the VHS tape and the DVD. The featured program
on the VHS tape is forty-five minutes of elementary learning
concepts geared toward toddlers. The DVD has the same
featured program, but also includes some additional
features. Specifically, the DVD includes a "Scene
Selection" menu feature that allows viewers to begin

4 In support of the motion for summary judgment, petitioner
submitted the declaration of William Lehner, a trademark
administrative assistant of petitioner's attorney, who avers that
he viewed the VHS tape and the DVD sold under the involved mark;
that the content of the featured program on the VHS tape and the
DVD "appears to be the same;" and that the DVD merely contains a
few additional features not included on the VHS tape. In
opposition to the motion, respondent asserts that Mr. Lehner has
"no ascertainable background, training or experience in comparing
the video content for purposes of determining whether a VHS and
DVD constitute multiple creative works." Brief in opposition at
9. However, respondent does not identify any differences in the
content of the featured program on the VHS tape and the DVD.

Cancellation No. 92052047
9
playback at ten points of the program and an “Extras” menu,
which includes the following additional content: Behind the
Scenes (a seven-minute clip featuring information on the
making of respondent's videos and customer testimonials),
Baby Bloopers (less than two minutes of outtakes and
bloopers), Sneak Peaks (an advertisement for respondent's
other video titles, none of which includes LAUGH & LEARN), a
Contact Us screen (information on contacting respondent),
Baby Face Storybook (an nine-panel storyboard that is on
view for less than two minutes and does not change in
content), and a page entitled DVD-ROM Activities that
instructs viewers to put the DVD into a computer to open a
file found in the DVD-ROM folder. Such file provides a link
to a website that displays a black and white design similar
to the cover of the DVD.
We find no genuine dispute that the additional content
on the DVD is insufficient to show that the VHS and DVD
versions are a series. The featured program on both the VHS
tape and the DVD are the same creative work, and the
addition of the minor enhancements in the DVD does not
transform this single work into a series, any more than the
variations in a live performance that occur from night to
night transform the title of a single production into a
series. See Posthuma, supra. Moreover, the LAUGH & LEARN
program is promoted in respondent’s catalogs as a single
Cancellation No. 92052047
10
work that is available in both VHS and DVD formats. See,
e.g., discovery deposition of respondent's president and
CEO, Dennis P. Fedoruk, exhibits 16 and 17. Consumers will
understand that the DVD version, even with the enhancements,
is merely the same work as appears on the VHS tape, both of
which have the title LAUGH & LEARN, rather than regarding
the DVD as another item in a series bearing the mark LAUGH &
LEARN.
The case law is clear that parties cannot gain
trademark rights in titles of works, and that in order to
obtain or maintain a registration, there must be clear
evidence that the mark identifies a series of different
works. 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. See Cooper, 117 USPQ at 400.
Respondent has not cited to any cases, nor is the Board
aware of any, in which a series of creative works was found
based on the same featured program sold under the same title
in different formats with minor additional content in one of
the formats. Because respondent’s use of the same title for
essentially the same work delivered in two formats does not
transform the title into a mark for a series, we find that
petitioner is entitled to entry of judgment as a matter of
Cancellation No. 92052047
11
law on its claim that respondent has not used LAUGH & LEARN
as a trademark for a series, but only as the title of a
single creative work.
In view thereof, petitioner's motion for summary judgment
is granted.5 Judgment is hereby entered against respondent,
the petition to cancel is granted, and Registration No.
3214699 will be cancelled in due course.

5 Petitioner's motion for leave to file an amended petition to
cancel is moot.