[E-trademarks] Portion of a title of a work as a source indicator

[Kevin Grierson]

You would likely get a refusal based on the lone specimen, because titles for creative works only function as trademarks if there is more than one work bearing the mark.  As for your hypo, it would certainly be better if the portion you wished to register was in a different font, color, size etc. from the rest of the title, but I think under appropriate circumstances the use of the TM along with the colon could work, especially if used across multiple titles, e.g., STAR WARS™: THE CLONE WARS and STAR WARS™: ROGUE ONE.

Kevin Grierson​​​​
[cid:image001.png at 01DADDF2.3CB1F290]
[Mobile:]
  757-726-7799<tel:757-726-7799>
[Fax:]
  866-521-5663<fax:866-521-5663>
[Email:]
  kgrierson at cm.law<mailto:kgrierson at cm.law>

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Bosland Law via E-trademarks
Sent: Wednesday, July 24, 2024 5:42 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Bosland Law <office at bosland.law>
Subject: [E-trademarks] Portion of a title of a work as a source indicator

EXTERNAL EMAIL
Hi All!

     I know that a portion of the title of a work (a book, let's say), can be trademark use for the purposes of USPTO registration<https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1200d1e2574.html>, but would simply adding a "TM" superscript to that portion, of a single work, really be enough?     Thus:   "NOT A TRADEMARK™: How to get the most out of your Examining Attorney"    <-- photo of one work is the only specimen provided..


db

David Bosland
Bosland Law, PLLC
www.bosland.law<http://www.bosland.law/>
david at bosland.law<mailto:david at bosland.law>
206.289.0156<tel:206.289.0156>

-----------------------------------

This message is intended only for the person or entity named in the addressee or copy field.  This message may contain information that is privileged, confidential or exempt from disclosure by the attorney-client privilege, work product doctrine or some other applicable privilege and/or protection.  Any dissemination or copying of this message or its contents by anyone other than the intended addressees is strictly prohibited.  If you are not an intended recipient or an employee or agent responsible for delivering this message to an intended recipient, please notify me immediately by reply email, and permanently destroy this message and any copies you may have.  Thank you.
[https://lh3.googleusercontent.com/a/ACg8ocL4MK9E-UmzfhZjhm-7luZ_hpGeTjREWv4ymW64tOhFB55pQY4=s40-p]
ReplyForward

-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240724/54cb84d1/attachment.htm>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.png
Type: image/png
Size: 3100 bytes
Desc: image001.png
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240724/54cb84d1/attachment.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image002.png
Type: image/png
Size: 285 bytes
Desc: image002.png
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240724/54cb84d1/attachment-0001.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image003.png
Type: image/png
Size: 452 bytes
Desc: image003.png
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240724/54cb84d1/attachment-0002.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image004.png
Type: image/png
Size: 394 bytes
Desc: image004.png
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240724/54cb84d1/attachment-0003.png>