American Payroll Institute

Trademark Trial and Appeal Board

Apr 17, 2001

No. 75594821 (T.T.A.B. Apr. 17, 2001)

4/17/01 Paper No. 13
RLS/krd
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re American Payroll Institute
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Serial No. 75/594,821
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John W. Hazard, Jr. of Webster, Chamberlain & Bean for
American Payroll Institute.
Michael J. Badagliacca, Trademark Examining Attorney, Law
Office 106 (Mary Sparrow, Managing Attorney).
_______
Before Simms, Hairston and Drost, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
American Payroll Institute (applicant), a New York
corporation, has appealed from the final refusal of the
Trademark Examining Attorney to register the mark ESSENTIAL
PAYROLL SKILLS for educational instruction books.1 The
Examining Attorney has refused registration because
applicant’s mark is the title of a single work, and as
1 Application Serial No. 75/594,821, filed November 24, 1998;
amended to the Supplemental Register on October 19, 1999. The
application asserts use and use in commerce since September 1998.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Serial No. 75/594,821
2
such, does not function as a trademark. The mark as used
on the specimen of record is reproduced below (in reduced
form). Applicant and the Examining Attorney have submitted
briefs, but no oral hearing was requested.2
2 Despite the fact that applicant amended this application to
seek registration on the Supplemental Register, the Examining
Attorney continued to refuse registration under Sections 1, 2 and
45 of the Trademark Act. After this application was amended to
one seeking registration on the Supplemental Register, the
appropriate refusal was under Section 23 of the Trademark Act, 15
Serial No. 75/594,821
3
We affirm.
Applicant argues that its mark functions as a
trademark to identify its goods because the mark is used to
denote a series of books used in educational courses.
While applicant states that this title is for a series of
publications rather than the title of a single publication,
it is clear from applicant’s submissions that the specimen
of record represents a single work which applicant
apparently intends to change periodically. That is to say,
although applicant states that the asserted mark is used
“to denote a series of books, not one single book,”
applicant also indicates that the “specimen of record is
the first of many books that will be published bearing this
mark.” Reply brief, 1. Further, applicant indicates that
the use of this mark is “new,” and that therefore applicant
does not have an entire series to show the Examining
Attorney. Applicant also argues that it has filed and
registered other marks on the basis of similar specimens.
The Examining Attorney argues that applicant’s
asserted mark does not function as a trademark because
there is no evidence that applicant uses the mark to
identify more than one publication. Indeed, in the first
USC § 1191. See In re Eilberg, 49 USPQ2d 1955, fn. 2 (TTAB
1998).
Serial No. 75/594,821
4
Office Action the Examining Attorney noted that, if
applicant uses the mark to identify a series of books
rather than a single work, then applicant should provide
evidence to demonstrate this fact for the record, and the
Examining Attorney indicated that he would withdraw the
refusal. Under existing case law, according to the
Examining Attorney, applicant’s asserted mark defines a
distinct genus of goods and does not indicate source. See
In re Cooper, 254 F.2d 611, 117 USPQ 396 (CCPA 1958), cert.
denied, 358 U.S. 840, 119 USPQ 501 (1958). In this regard,
the Examining Attorney notes the following language from
Cooper, 117 USPQ at 400;
The name for a series, at least while it is still
being published, has a trademark function in
indicating that each book of the series comes
from the same source as the others. 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. While it may be indicative either
specifically or by association in the public
mind, of the general nature of the contents of
the publication, it is not the name or title of
anything contained in it. A book title, on the
other hand especially one which is coined or
arbitrary, identifies a specific literary work,
of whatever kind it may be, and is not associated
in the public mind with the publisher, printer or
bookseller -– the “manufacturer or merchant”
referred to in the Trademark Act (Sec. 45,
definition of trademark). If a title is
associated with anything, it is with the author
for it is he who has produced the literary work
which is the real subject of purchase.
Serial No. 75/594,821
5
Accordingly, the Examining Attorney maintains that titles
of single works are not registrable as trademarks. Because
applicant’s asserted mark is used as the title of a single,
individual work and not a series of books all bearing this
asserted mark, the Examining Attorney maintains that the
refusal should be affirmed.
Further, with respect to applicant’s prior pending
application and registration, the Examining Attorney notes
that copies of these files are not in the record and that
each case must be decided on its own merits, with prior
decisions of different Examining Attorneys in other cases
not binding on this Examining Attorney or the Board. The
Examining Attorney maintains that he must examine
registrability based upon the record in this case, which
may involve different specimens, in the determination of
the function this particular term performs. Here, the
Examining Attorney argues, there is no evidence that the
asserted mark functions as a trademark for a series of
publications.
In In re Posthuma, 45 USPQ2d 2011 (TTAB 1998), the
Board recently discussed the existing case law with respect
to the registrability of titles of single works. Suffice
it to say that, unless and until applicant uses the
Serial No. 75/594,821
6
asserted mark as a title for another publication, the mark
remains unregistrable under existing precedent. Although
applicant represents that it has received a registration of
another mark covering educational instruction books, we
must determine this appeal on the basis of the facts before
us in this case, as the Examining Attorney has pointed out.
Because the asserted mark is used only in connection with a
single publication and not a series of publications, the
asserted mark does not function as a trademark to identify
and distinguish applicant’s goods.
Decision: The refusal of registration is affirmed.