Alpha-critters, Inc.

Trademark Trial and Appeal Board

Jul 27, 2009

No. 76573434 (T.T.A.B. Jul. 27, 2009)

Mailed: July 27, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Alphacritters, Inc.
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Serial No. 76573434
_______

Daniel T. Earle of Shlesinger, Arkwright & Garvey LLP for
Alphacritters, Inc.

Janice L. McMorrow1, Trademark Examining Attorney, Law
Office 115 (Tomas V. Vlcek, Managing Attorney).
_______

Before Hairston, Mermelstein and Wellington, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Alphacritters, Inc., applicant, filed an application
to register CRITTERS FOR COMPANY (in standard characters)
as a trademark on the Principal Register for “children’s
books” in International Class 16, based on Section 1(b)
(intent-to-use).2

1 Application was reassigned to the identified examining
attorney.
2 Application Serial No. 76573434 filed on February 2, 2004.
THIS OPINION IS
NOT A
PRECEDENT OF
THE TTAB
Serial No. 76573434

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The application was published for opposition and, no
opposition having been filed, a Notice of Allowance
subsequently issued. Applicant was granted three
extensions of time to file a statement of use, and then
filed its statement of use with specimens.
The examining attorney finally refused registration
under Sections 1, 2 and 45 of the Trademark Act, 15 U.S.C.
§§ 1051, 1052, 1127, on the ground that applicant's
proposed mark, as used on the specimens of record, does not
function as a trademark for the identified goods because it
is the title of a single work.
Applicant concurrently filed an appeal of the refusal
and a request for reconsideration thereof. In response to
the request for reconsideration, the examining attorney
maintained the refusal. The Board resumed the appeal and
briefs were filed.
It is well settled, as recognized both by applicant
and the Examining Attorney, that titles of single works are
not registrable as trademarks. In re Cooper, 254 F.2d 611
117 USPQ 396, 400 (CCPA 1958), cert. denied, 358 U.S. 840
(1958); Herbko Int’l Inc. v. Kappa Books, Inc., 308 F.3d
1156, 64 USPQ2d 1375 (Fed. Cir. 1984); In re Scholastic
Inc., 223 USPQ 431 (TTAB 1984). The rationale for such an
absolute refusal can be explained by the language in Cooper
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where the court analogized a book purchaser’s decision to
that of someone seeking to buy a can of soup:
The purchaser of a book is not asking for a “kind” or
“make” of book. He is pointing out which one of
millions of distinct titles he wants, designating the
book by its name. It is just as though one walked
into a grocery and said “I want some kind of food” and
in response to the question “What kind of food?” said,
“A can of chicken noodle soup.”

In re Cooper, 254 F.2d at 614-615.

Should the proposed mark be used as a name for a
series of books that remain in publication, however, it
serves a trademark function because it is “indicating that
each book of the series comes from the same source as the
others.” Id. at 615. That is,
The name of the series is not descriptive of any one
book and each book has its individual name or title.
A series name is comparable to the title of a
periodical publication such as a magazine or
newspaper.

Id.
The “title of a single work” refusal has been extended
to musical recordings, printed publications and live
theatrical productions. See In re Posthuma, 45 USPQ2d 2011
(TTAB 1998), and cases cited therein.
The proposed mark, as it appears in the specimen, is
as follows:
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Applicant acknowledges that it, “at this time, has
only created one book,” but argues that the title of the
book is “A Whimsical Journey” and that applicant intends to
create a second book. (Applicant’s Response, dated June 6,
2008, to Office Action.) Applicant states ‘A Whimsical
Journey’ is only “the first of a series of books.”
(Request for Reconsideration, dated December 19, 2008.)
Applicant notes the space between the two phrases as well
as the difference in font and letter sizes and argues that
the two phrases create separate commercial impressions.
Indeed, applicant contends that the proposed mark is
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“prominently displayed on the cover of the book in an
effort to identify the source of applicant’s goods, and
expand the use of applicant’s mark.” Brief, p. 9.
In further support of registration of its proposed
mark, applicant notes specifically that the court in Cooper
stated that, “no one has asserted that a word may not be
used as a trademark for books or that they cannot be
trademarks for books, in the form of a word or otherwise,
or that trademarks for books cannot be registered under the
Lanham Act.” In re Cooper, 254 F.2d at 613. And that the
court continued:
Nothing we say should be taken as implying that no
trademark for books can be registered; but before
there can be registration there must be a trademark
and a trademark exists only where there has been
trademark use.

Id.
Based on Cooper and other case law, including Board
precedent, applicant asserts that the “ultimate question is
whether the designation sought to be registered is a
trademark or is the title of the work.” Brief, p. 8. And,
in this regard, applicant argues that it has “created an
entire business around the mark [CRITTERS FOR COMPANY].”
Brief, p. 8. In particular, applicant points to two
registrations that it owns, and made of record, for the
same mark for various types of other goods, e.g., clothing,
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bedding, and stationery.3 With its request for
reconsideration, applicant attached printouts from its
website that, according to applicant, “demonstrate[] that
applicant uses the mark, CRITTERS FOR COMPANY, to identify
the source of various goods. Included in the goods offered
by applicant is a series of books.”4 Applicant concludes
that the record demonstrates that it uses the proposed mark
on, or in connection with, various goods and services,
including children’s books, and “it is not the title of any
particular work, but rather, functions as a trademark.”
Id. at 10.
Essentially, applicant has raised two issues. First,
whether the proposed mark, as used, is the title of a
single work. Second, assuming the proposed mark is being
used as the title of a single work, can evidence of its use
on unrelated goods support registration of the proposed
mark on books or otherwise obviate the refusal to register.

3 Registration No. 2845744 (issued May 25, 2004) covering:
Stationery, namely, printed invitations, greeting cards, note
cards and paper banners in International Class 16; Bedding and
linens, namely, youth bed sheets, crib bed sheets, pillowcases,
comforters, shams, dust ruffles, crib bumper pads and cloth
banners in International Class 24; and Wallpaper and wall
hangings in International Class 27.

Registration No. 2909811 (issued December 14, 2004) covering:
Cchildren’s and infant's clothing, namely, pajamas, t-shirts,
hats, caps, jackets and bibs in International Class 25.

4 Request for Reconsideration, dated December 19, 2008.
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In addressing the first issue, we note that it is not
disputed that applicant does not use its proposed mark in
connection with a series of books. Rather, applicant
states that it intends to create such a series, but, as a
result of the death of the author of the first book, its
efforts in this regard have been delayed and applicant is
currently only using the proposed mark in connection with a
single book. Thus, the only question in addressing the
first issue is really whether the proposed mark is the
title of the book. Based on the specimen of use, we
conclude that CRITTERS FOR COMPANY would be perceived by
consumers as the title of the book. The proposed mark
appears in larger letters directly above the author’s name.
The second page of applicant’s specimen providing “A little
background...” indicates that even applicant, itself, uses
the proposed mark as the title of the book (“Friend and
customers everywhere have asked for a venue featuring the
entire ‘critters’ alphabet collection and to that end, work
on Critters for Company ® -- the book – began!”) Moreover,
we agree with the examining attorney that the other phrase,
A WHIMSICAL JOURNEY, is “merely serving as a secondary or
explanatory title.” Brief, (unnumbered) p. 4. Even if we
were to accept applicant’s argument that the secondary
phrase creates a different commercial impression and is
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actually a title of the book, we see no reason why the same
book may not have more than one title. In other words,
CRITTERS FOR COMPANY would still be the title of a single
work.
We turn now to the second issue raised by applicant
and, in doing so, recognize that applicant is essentially
arguing that its proposed mark, CRITTERS FOR COMPANY, is
being used as a mark in connection with other goods and
that secondary meaning may be attributed to applicant’s
mark when it is used on its book, albeit as a title. In
this regard, we note that applicant’s evidence, including
its registrations, demonstrate that applicant has rights in
the same mark in connection with various goods other than
books. Applicant’s argument, however, is unavailing. Our
primary reviewing court has made it clear that although
titles of single works may be protected under Section 43(a)
of the Lanham Act (“False designations of origin; false
description or representation”)5, the Patent and Trademark
Office’s policy of barring all titles of single works is in
accordance with the Cooper decision. Specifically, the
Court of Appeals for the Federal in Herbko cites to Cooper
approvingly for the proposition that “titles of single

5 Section 43(a) is associated with civil actions and not Board
proceedings.
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books cannot be registered as a trademark” and acknowledges
the section in the “Trademark Manual of Examining
Procedure” that provides “[t]he title of a single work is
not registrable on the Principal Register or the
Supplemental Register.” Herbko Int’l Inc., 308 F.3d at
1163.6 In a footnote, the court clarified that, “[w]hile
titles of single works are not registrable, they may be
protected under section 43(a) of the Lanham Act upon a
showing of secondary meaning.” Id. (citations omitted).
With such precedent, even if we were to find that applicant
demonstrated that its proposed mark CRITTERS FOR COMPANY
has acquired secondary meaning as a result of its use of
the term as a mark on other various goods,7 such a finding
cannot overcome the refusal should we find, as we have
here, that the proposed mark serves as the title of a
single book.
In conclusion, inasmuch as we find that the proposed
mark is the title of a single book, we affirm the examining
attorney’s refusal to register the proposed mark on that
ground.

6 The current section which has not changed in substance, is
Trademark Manual of Examining Procedure (TMEP) § 1202.08 (5th ed.
rev. September, 2007).
7 For sake of clarity, we make no such finding regarding whether
secondary meaning has been established because, as explained, any
such finding would be pointless.
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Decision: The refusal to register is affirmed.