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

[Bosland Law]

Thanks for the great feedback everyone.  The registration example I have
looks like it should probably not have been accepted based on TMEP
1202.8(d) which seems pretty specific.  Looks like the EA saw it more like
Sam does.


db

On Wed, Jul 24, 2024 at 9:55 PM Sam Castree via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> Unless the book is a *coloring* book.  Then a single work is totally
> acceptable, no series needed.  (Same with video games, which are much
> closer to my heart and that of my practice).
>
> Cheers,
>
> Sam Castree, III
>
> *Sam Castree Law, LLC*
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>
>
> On Wed, Jul 24, 2024 at 8:11 PM Lara Pearson via E-trademarks <
> e-trademarks at oppedahl-lists.com> wrote:
>
>> Title of a single work cannot function as a TM
>> <https://tmep.uspto.gov/RDMS/TMEP/current#/result/TMEP-1200d1e2517.html?q=title%20of%20a%20single%20work&ccb=on&ncb=off&icb=off&fcb=off&ver=current&syn=adj&results=compact&sort=relevance&cnt=10&index=2>.
>> For TM rights to exist, there must be a series. The specimen could contain
>> the mark on a single work, so long as the image depicts the 2nd or a
>> subsequent work in the series. That said, since the mark must be on at
>> least 2 works, I would submit images of both. More is better when it comes
>> to evidence of use, IMHO.
>>
>>
>> Lara Pearson (she/her/hers) [Why pronouns
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>>
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>> On Wed, Jul 24, 2024 at 2:42 PM Bosland Law via E-trademarks <
>> e-trademarks at oppedahl-lists.com> wrote:
>>
>>> 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
>>>
>>> david at bosland.law
>>>
>>> 206.289.0156
>>>
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