Returning once again to failure-to-function land, the TTAB reversed a refusal to register the mark PREDICTIVE ENTREPRENEUR for educational services including seminars in the field of business and entrepreneurship. The Board rejected the USPTO's position that the course offered by Applicant Meredith Madsen would be perceived as a single work and therefore fails to function as a trademark. In re Meredith Madsen, Serial No. 87054308 (September 24, 2019) [not precedential] (Opinion by Judge Jonathan Hudis).
The title of a single creative work, such as a book, is not considered a trademark and is therefore unregistrable. Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§ 1051, 1052, and 1127; In re Cooper, 254 F.2d 611, 117 USPQ 396, 400 (CCPA 1958). In In re Posthuma, 45 USPQ2d 2011, 2014 (TTAB 1998), the Board extended the "title of a single work" refusal from books to live theatrical productions: "Whatever the changes made to this live theater production, it still remains a single work, thus, these often subtle changes do not transform the show into a 'series' of shows, thereby turning the unregistrable title into a registrable service mark."
The examining attorney relied on Posthuma and on applicant's specimen of use, a course flyer, in maintaining that the educational course that applicant offers in connection with the Florida Atlantic University School of Business under the mark PREDICTIVE ENTREPRENEUR "is but one course in a series of other courses (e.g., DISRUPTIVE TECHNOLOGY and HOW TO ESTABLISH FOREIGN BUSINESS), on the broader topic of entrepreneurship, and will be perceived as the title of a single work." The Board disagreed.
Single creative works include works in which the content does not change, whether that work is in printed, recorded, or electronic form. A theatrical performance is a single creative work because the content of the play, musical, opera, or similar production does not significantly change from one performance to another. In re Posthuma, 45 USPQ2d at 2014; TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) §1202.08(a) (2019).
The Board observed that educational services such as university courses are different from scripted theatrical performances. In fact, the TMEP specifies that "[l]ive performances by musical bands, television and radio series, and educational seminars are presumed to change with each presentation and, therefore, are not single creative works." TMEP § 1202.08(b) (emphasis added by the Board).
Applicant Madsen stated, without challenge by the examining attorney, that she has "provided at least seven different lectures for the educational services recited in this application with different subject matter for each lecture relating to the mark Predictive Entrepreneur." The Board therefore found that the examining attorney failed to meet her burden of proof.
And so the Board reversed the refusal.
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