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

Thu Jul 25 21:38:30 EDT 2024

Sam, I see the statement that coloring books and computer games are not considered single creative works in TMEP 1202.08(b). Do you have an explanation of why? Maybe I’m just too tired, but that doesn’t make any sense to me.

Best regards,
Richard A. Schafer | Schafer IP Law
P.O. Box 230081 | Houston, TX 77223
M: 832.283.6564 | richard at schafer-ip.com<mailto:richard at schafer-ip.com>

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Sam Castree via E-trademarks
Sent: Wednesday, July 24, 2024 11:53 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Sam Castree <sam at castreelaw.com>
Subject: Re: [E-trademarks] Portion of a title of a work as a source indicator

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
3421 W. Elm St.
McHenry, IL 60050
(815) 344-6300

On Wed, Jul 24, 2024 at 8:11 PM Lara Pearson via E-trademarks <e-trademarks at oppedahl-lists.com<mailto: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<https://medium.com/gender-inclusivit/why-i-put-pronouns-on-my-email-signature-and-linkedin-profile-and-you-should-too-d3dc942c8743>?] (Hear how I say my name<https://namedrop.io/larapearson>)

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On Wed, Jul 24, 2024 at 2:42 PM Bosland Law via E-trademarks <e-trademarks at oppedahl-lists.com<mailto: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<http://www.bosland.law/>
david at bosland.law<mailto:david at bosland.law>
206.289.0156<tel:206.289.0156>

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