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

Fri Jul 26 00:28:14 EDT 2024

Dear Richard,

I once asked a presenter from the PTO about why coloring books and video
games are exceptions to this rule, and he had no idea.  If I had to guess
about coloring books, I suppose that they are more similar to toys and
games than to..."regular" books.  Our listmate Prof. Roberts had the same
thought when we discussed it on Twitter recently.  But still, it's only a
guess.

As for video games, I've thought more about this, given that they form a
large part of my practice.  Again, this is just my own theory, but video
games began as computer software.  You have one computer program to do
math, another program for word processing, and another to play chess or
whatever else.  Take out one floppy disk and stick in another.  As time
went on, a lot of computer games have moved in the direction of huge
cinematic productions, but they started off  in the category of software,
and so they kept in that lane for this purpose of, call it "product
names."  Kind of a path-dependency issue, basically.  That's what I think,
at least.

I'd love to hear from others, though.  If you all have any greater insight,
then please share with the class.

Cheers,

Sam Castree, III

*Sam Castree Law, LLC*
*3421 W. Elm St.*
*McHenry, IL 60050*
*(815) 344-6300*

On Thu, Jul 25, 2024 at 8:38 PM Richard Schafer <richard at schafer-ip.com>
wrote:

> 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
>
>
>
> *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> 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>)
>
> Law Office of Lara Pearson Ltd, PBC
>
> Leader, Brand Geek
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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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