This requirement applies to Class 9 only.The applicant must provide additional information regarding the specimens of use for the goods in Class 9. The Statementof Use indicates that the specimens are cover art from the applicant’s CD’s. However, the applicant must indicate whetherthe specimens consist of cover art from a single CD or more than one CD.
Advisory – Title of a Single Work
Applicant is advised that, upon consideration of applicant’s response to this Office action, registration may be refused onthe ground that the applied-for mark, as used on the specimen of record, is the title of a single creative work, namely thetitle of a specific CD, and as such does not function as a trademark to identify and distinguish applicant’s goods from thoseof others and to indicate the source of applicant’s goods. Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052,1127;
see Herbko Int’l, Inc. v. Kappa Books, Inc.
, 308 F.3d 1156, 1162-63, 64 USPQ2d 1375, 1378-79 (Fed. Cir. 2002);
, 254 F.2d 611, 615-16, 117 USPQ 396, 399-400 (C.C.P.A. 1958); TMEP §§1202.08, 1202.08(f). Single creativeworks include works in which the content does not change significantly, whether that work is in printed, recorded orelectronic form. TMEP §1202.08(a).However, the name of a series of creative works may be registrable if the designation serves to identify and distinguish thesource of the series. The name for a series of creative works has trademark function in indicating that each work in theseries comes from the same source as the others.
In re Scholastic, Inc.
, 23 USPQ2d 1774, 1776 (TTAB 1992);
TMEP§1202.08(c). Therefore, if applicant uses the mark to identify a series, rather than a single work, applicant may providesuch evidence for the record to avoid a refusal. Evidence of a series includes copies of at least two different book covers orpackaging for recorded works (not two copies of the same work) that show the mark as a source identifier for a series aswell as distinguish the mark from the individual titles of the works.
See In re Scholastic
, 23 USPQ2d at 1776-78; TMEP§1202.08(c).The applicant should also note the following refusal:
Name/Pseudonym of Performing Artist
Registration is refused because the applied-for mark, as used on the specimen of record, identifies only the featuredperformer(s) on a sound recording; it does not function as a trademark to identify and distinguish applicant’s goods fromthose of others and to indicate the source of applicant’s goods. Trademark Act Sections 1, 2 and 45, 15 U.S.C.§§1051-1052, 1127;
see In re Polar Music Int’l AB
, 714 F.2d 1567, 221 USPQ 315 (Fed. Cir. 1983);
In re Spirer
, 225USPQ 693 (TTAB 1985); TMEP §§904.07(b), 1202.09(a).Applicant may respond to this refusal by satisfying one of the following:
(1) Submitting evidence that (a) the name is used on a
of sound recordings, and (b) the name is
promoted and recognized byothers
as the source of a series of sound recordings.
cf. In re First Draft, Inc
., 76 USPQ2d1183, 1190 (TTAB 2005). Evidence of a series includes copies or photographs of at least two different CD covers or similar