Bryan Wisda

Trademark Trial and Appeal Board

Sep 4, 2020

88172331 (T.T.A.B. Sep. 4, 2020)

Mailed: September 4, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Bryan Wisda
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Serial No. 88172331
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Adam R. Stephenson of Adam R. Stephenson Ltd. and Leia M. Dingott of
IPTechLaw for Bryan Wisda.

Katherine Ferrell, Trademark Examining Attorney,
Law Office 126 (Andrew Lawrence, Managing Attorney).
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Before Kuhlke, Shaw and Johnson, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Applicant, Bryan Wisda, filed an application to register the mark ADHD
LULLABY in standard characters for goods identified as “Sound recordings
featuring music for individuals diagnosed with ADHD,” in International Class 9.1
The Examining Attorney refused registration under Sections 1, 2 and 45 of the
Trademark Act, 15 U.S.C. §§ 1051, 1052 and 1127 for failure to function as a title of
a single work.

1 Application Serial No. 88172331 was filed for registration on the Principal Register on
October 29, 2018, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), alleging
first use and first use in commerce on September 15, 2018. The basis, register and first use
dates were amended during prosecution as discussed below.
This Opinion is not a
Precedent of the TTAB
Serial No. 88172331

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I.Procedural History
Applicant originally filed the application under Section 1(a) of the Trademark
Act based on an allegation of September 15, 2018 as the date of first use and first
use in commerce. The Examining Attorney refused registration for failure to
function under Sections 1, 2, and 45 because ADHD LULLABY is the title of a
single work and advised Applicant it could respond to that refusal by either
submitting evidence that the proposed mark identifies a series of creative works or
amend the filing basis to intent to use under Section 1(b) of the Trademark Act, 15
U.S.C. § 1051(b). In addition, the Examining Attorney refused registration under
Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that the
applied-for mark merely describes a feature and the intended users of the goods.
The Examining Attorney advised Applicant it could respond to that refusal by
amending to seek registration on the Supplemental Register. Finally, the
Examining Attorney refused registration because the specimen of use was a
printer’s proof. February 6, 2019 Office Action.
Applicant responded by amending to seek registration based on an intent to use
the applied-for mark in commerce under Section 1(b) and argued against the mere
descriptiveness refusal. May 6, 2019 Response.
The Examining Attorney then withdrew the failure to function and specimen
refusals, issued a final refusal on the mere descriptiveness refusal, and provided an
advisory that going forward Applicant cannot amend to the Supplemental Register
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due to the amendment to allege intent to use under Section 1(b). May 30, 2019 Final
Office Action.
On November 27, 2019, Applicant filed an Amendment to Allege Use (“AAU”)
and an amendment to seek registration on the Supplemental Register. The AAU
alleges first use and first use in commerce on November 26, 2019.
On December 6, 2019, the Examining Attorney made final the failure to function
refusal that had been withdrawn in the prior Office Action in view of the prior
amendment to a Section 1(b) application, and withdrew the Section 2(e)(1) refusal
in view of the amendment to the Supplemental Register.
II.Procedural Challenges
Applicant asserts three procedural challenges: 1) in view of the acceptance of the
AAU, the Examining Attorney’s conclusion that the specimens fail to show use as a
mark is incorrect; 2) the final action was premature in view of the “new issue”
presented by Applicant’s amendment to the Supplemental Register; and 3) the
Board erred by not allowing Applicant six months to respond to the December 6,
2012 Office Action. We address each in turn.
A. Acceptance of AAU
Applicant argues that the acceptance of the AAU issued the day after the
Examining Attorney issued the Final Office Action and this was an error. Applicant
asserts that Trademark Rule 2.76(e), 37 C.F.R. § 2.76(e), provides that “the AAU
should be examined before an office action is issued since the Applicant is to be
notified and given 6 months to reply to the notification” and the Examining
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Attorney “should have waited until after the notification that the AAU was accepted
as described in the Office procedure and described to the Applicant.” App. Brief, 7
TTABVUE 6.
Trademark Rule 2.76(e) provides for the “Notification of refusals and
requirements” for an AAU. Specifically:
A timely filed amendment to allege use that meets the
minimum requirements specified in paragraph (c) of this
section will be examined in accordance with §§ 2.61
through 2.69. If, as a result of the examination of the
amendment to allege use, the applicant is found not
entitled to registration for any reason not previously
stated, the applicant will be notified and advised of the
reasons and of any formal requirements or refusals. The
notification shall restate or incorporate by reference all
unresolved refusals or requirements previously stated.
The amendment to allege use may be amended in
accordance with §§ 2.59 and 2.71 through 2.75.
Based on the Trademark Rules, Applicant argues that there is a requirement
that a refusal or requirement precipitated by the AAU may not be sent prior to the
procedural acceptance of the AAU. As the Examining Attorney explains, an AAU
filing must be accepted if it meets the minimum filing requirements; this is
separate from other issues that may be presented in an AAU. The minimum filing
requirements are: 1) the fee; 2) one specimen of the mark used in commerce; and 3)
a verified statement. Trademark Rule 2.76(c), 37 C.F.R. § 2.76(c). If the minimum
requirements are not met a deficiency notification is issued, 37 C.F.R. § 2.76(c), if
they are met but other issues exist a notification of refusals and requirements is
issued, 37 C.F.R. § 2.76(e). The two notifications are separate and the acceptance of
the AAU does not have a response time and does not impact the response time to a
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notification of refusals and requirements. The Examining Attorney explains that
she examined and accepted the AAU for minimum filing requirements on December
6, 2019 prior to the subsequent Final Office Action raising substantive issues, but
the “USPTO system used by the examining attorney appears to have a delay from
when the Amendment to Allege Use was actually accepted and when notification
was made.” Ex. Att. Brief, 9 TTABVUE 7. The AAU has to be accepted in order for
an examining attorney to conduct the next step, as was done in this case; however,
there is no requirement regarding the timing of the sending of these notifications.
We find no error.
B. Amendment to Supplemental Register
Applicant relies on Trademark Manual of Examining Procedure (“TMEP”)
§ 714.05(a)(i) and asserts the amendment to the Supplemental Register raised a
new issue and a non-final action should have been issued. Applicant adds that the
notice of appeal it filed “would have been appealing the merely descriptiveness
rejection from the 5/30/2019 OA which has since been withdrawn [and] Applicant
has not yet had a chance to respond to the Examiner’s Failure to Function as a
Trademark rejection.” App. Brief, 7 TTABVUE 7.
TMEP Section 714.05(a)(i) sets out the procedure for when a new issue is raised
that requires a non final office action. When an applicant amends to seek
registration on the Supplemental Register, if it overcomes the refusal there is no
need for an office action. TMEP § 714.05(a)(i). With regard to the refusal based on
mere descriptiveness under Section 2(e)(1), it overcame that refusal. If an
amendment to the Supplemental Register is irrelevant to the outstanding refusal,
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and there are otherwise no new issues, the examining attorney may issue a final
action. Id. A title of a single work may not be registered on the Supplemental
Register, and such amendment is irrelevant to that refusal. TMEP § 1208.02 (citing
Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1162, 64 USPQ2d 1375, 1378
(Fed. Cir. 2002).
Here, a new issue was not raised by the amendment to the Supplemental
Register because it simply served to resolve the refusal based on mere
descriptiveness under Section 2(e)(1). However, once Applicant amended to assert
use again, that move resurrected the refusal already made in the first Office Action
based on failure to function. As related above, Applicant was subject to both a
failure to function refusal and a mere descriptiveness refusal. In response, and in
order to avoid the failure to function refusal, Applicant amended the application to
seek registration based on intent to use. While that was a successful strategy to
remove the failure to function refusal, at least until a new specimen of use was
examined in an allegation of use, it did not overcome the mere descriptiveness
refusal. Applicant then did what is quite common, it filed an appeal to hold its place
for appealing and requested reconsideration to amend to the Supplemental Register
to overcome the mere descriptiveness refusal. Applicant’s amendment to the
Supplemental Register simply revived the failure to function refusal as this
specimen of use did not show use on a series of works but rather continued to show
use of a title in connection with a single work. In short, this is not a new issue, it is
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Applicant continuing to attempt to overcome all the refusals issued in the first
Office Action and it did not warrant a new non-final action.
C. Resumption of Appeal
Applicant also asserts that it was improper for the Board to resume the appeal
because the Final Office Action “clearly states on the first page that ‘The USPTO
must receive applicant’s response to this letter within six months of the issue date
below or the application will be abandoned.’” Id. Applicant further contends that it
should have been “afforded the standard six months from the time of the December
6, 2020 OA to decide whether to file an Appeal.” 7 TTABVUE 8.
As the Examining Attorney noted, what was in error was the six-month response
clause in the December 6, 2019 Final Office Action, not the Board’s resumption of
the appeal. Trademark Trial and Appeal Board Manual of Procedure (“TBMP”)
§ 1206.01 (2020) (“If the examining attorney, after consideration of the amendment
to allege use, adheres to the final refusal to register, or ultimately issues a new final
refusal to register, which may include a refusal based on information in the
amendment to allege use, the six-month response clause should be omitted from the
paper; the application should be returned to the Board; proceedings with respect to
the appeal will be resumed; and further appropriate action will be taken therein.”
Emphasis added). See also TMEP § 715.04(b) (“[A] request for reconsideration does
not raise a new issue, but presents new evidence that is significantly different from
evidence previously submitted by the applicant, the examining attorney must issue
an ‘Examiner’s Subsequent Final Refusal,’ that omits the six-month response
clause, specifies which issues are withdrawn and/or which amendments are
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accepted, and addresses the new evidence. … When proceedings with respect to the
appeal are resumed, any further request for reconsideration of the application must
be made via a request for remand, for which good cause must be shown.”).
The Office Action was in response to the request for reconsideration which also
served to revive and finalize the failure to function refusal. Applicant already had
six months to respond to the failure to function refusal issued in the first Office
Action. Applicant’s response was to amend to an intent to use application to allow
for more time to develop a series which would ultimately overcome a refusal based
on a title of a single work. Applicant’s subsequent amendment back to a use-based
approach, although successful with the merely descriptive refusal, effectively erased
its initial response to the failure to function refusal and offered a new specimen to
overcome that refusal. Applicant characterizes the “new” specimen of use as a new
issue, but it is effectively a request for reconsideration of the failure to function
refusal to show a series rather than a single work. This does not present a new
issue with regard to the failure to function refusal. That is, the fact that the new
specimen also does not show the mark used on a series of recordings is not a new
issue.
Because Applicant was already in an appeal, a request for reconsideration of the
subsequent final refusal was not an option. See Trademark Rule 2.142(d), 37 C.F.R.
2.142(d); TBMP § 1209.04. If Applicant wanted to submit yet another specimen of
use to overcome the failure to function refusal, Applicant would need to request
remand. Id.; In re Adlon Brand Gmbh & Co., 120 USPQ2d 1717, 1725 (TTAB 2016)
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(“Applicant’s brief on the case is not the appropriate avenue for raising an objection
to examination procedures. If Applicant believed that the issuance of the June 8,
2014 Office Action was procedurally erroneous, or if Applicant desired more time to
address the Examining Attorney’s new evidence, Applicant’s recourse was to file
with the Board, after the filing of the appeal but before briefing, a request for
remand with a showing of good cause.”).
Remands may be granted upon a showing of good cause. Good cause may be
found when, for example, an Applicant wishes to introduce additional evidence in
support of obviating the refusal. TBMP § 1207.02. Viewing Applicant’s arguments
embedded in its brief as a request for remand, such request is denied as Applicant
has not shown good cause. Applicant simply states “it should at the very least be
afforded the standard six months from the time of the December 6, 2020 OA to
decide whether to file an Appeal” and “a chance to respond to the new rejection
without having to file a Request for Reconsideration or a Notice of Appeal.” App.
Brief, 7 TTABVUE 7. The file was already in appeal status, there was no decision
point on whether to file an appeal. If Applicant did not want to continue with the
appeal of the refusal based on failure to function, Applicant could have defaulted by
not filing a brief or expressly withdrawn the application. With regard to the second
point, as explained above this was not a “new rejection” it was a reinstatement of
the failure to function refusal based on Applicant’s actions effectively withdrawing
the intent to use amendment of the application that precipitated the withdrawal of
that refusal. See TMEP section 714.05(a) (“An amendment withdrawing a prior
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amendment that was submitted in response to a refusal or requirement made by
the examining attorney in an Office action … does not raise a new issue.”).
Finally, in its main brief, Applicant did not request to or submit further evidence
to be considered on remand or reference a series of albums. Applicant waited until
its reply brief to request remand “for further consideration of new albums which
demonstrate that ADHD Lullaby does function as a trademark for a series of
albums.” Reply Brief, 10 TTABVUE 3. A request for remand “must include a
showing of goods cause therefor … and be accompanied by the additional evidence
sought to be introduced.” In addition, the “length of the delay in making the request
after the reason for the remand becomes known, or the point in the appeal process
at which the request for remand is made will be considered in the determination of
whether good cause exists. Generally, the later in the appeal proceeding that the
request for remand is filed, the stronger the reason that must be given for good
cause to be found.” TBMP § 1207.02; see also In re Petroglyph Games, Inc., 91
USPQ2d 1332, 1335 (TTAB 2009) (request for remand denied for consideration of
evidence attached to brief as “manifestly untimely”). In view of the length of the
delay in making the request and the failure to attach evidence sought to be
introduced, we do not find good cause to remand for further examination.2

2 Applicant is not without recourse, once Applicant has used ADHD LULLABY on a series,
Applicant may file another use-based application with the appropriate use dates.
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III.Failure to Function Title of a Single Work
The title, or a portion of a title, of a single creative work must be refused
registration under Sections 1, 2, and 45 of the Trademark Act, 15 U.S.C. §§ 1051,
1052, and 1127. The title of a single creative work is not registrable on either the
Principal or Supplemental Register. Herbko Int’l, Inc. v. Kappa Books, Inc., 64
USPQ2d at 1378 (“[T]he title of a single book cannot serve as a source identifier”);
In re Cooper, 254 F.2d 611, 117 USPQ 396, 400 (CCPA 1958), cert. denied, 358 U.S.
840 (1958), (“A book title . . . identifies a specific literary work . . . and is not
associated in the public mind with the publisher, printer or bookseller . . . .”). In
order to function as a trademark by designating source, a mark must have been
used to identify a series of different creative works. See In re Scholastic Inc., 23
USPQ2d 1774, 1776 (TTAB 1992); TMEP § 1202.08. The policy underlying this
approach is clear. Because a trademark can endure for as long as the trademark is
used, at the point that copyright protection ends and others have the right to use
the underlying work, they must also have the right to call it by its name. See
Cooper, 117 USPQ at 400.
In the decades since Cooper, the Board and our primary reviewing court have
both followed this policy and affirmed refusals to register titles of single creative
works. See, e.g., Herbko Int’l Inc. v. Kappa Books Inc., 64 USPQ2d at 1379-80
(finding that petitioner did not have proprietary rights in CROSSWORD
COMPANION for a series of crossword puzzle books at the time respondent filed its
involved application because petitioner did not publish its second volume of such
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books until after respondent’s first use); Mattel, Inc. v. The Brainy Baby Co., 101
USPQ2d 1140, 1143-44 (TTAB 2011) (holding that use of LAUGH & LEARN and
design for a program of elementary learning concepts geared toward toddlers,
offered in both VHS and DVD formats, constituted a single creative work); In re
Posthuma, 45 USPQ2d 2011, 2014 (TTAB 1998) (finding PHANTASM unregistrable
as the title of a theater production, notwithstanding the variations stemming from
live performance of that production).
The first specimen of use (an unacceptable printer’s proof) shown below is
described as an album cover.

The second specimen of use attached to the amendment to the Supplemental
Register shown below is described as a website showing the mark.
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The Examining Attorney explains that both specimens of use in the record show
a single collection of songs for a single album. In support of her statement she
submitted an excerpt from Applicant’s website shown below stating “the applicant’s
website shows that there is only a single album (though available in downloadable
and recorded forms) that is available to purchase.” December 6, 2019 Denial of
Request for Reconsideration.

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Applicant argues that “nowhere on the newly submitted specimen submitted on
November 27, 2019, is there any indication that ADHD Lullaby is merely a single
album.”3 7 TTABVUE 8. In fact, the website does present it as a single album, or as
the Examining Attorney describes “the specimens and evidence of record indicate
that they are grouped together into one single work.” 9 TTABVUE 5. In addition,
the only product available for sale on the website in this record is a single creative
work titled ADHD LULLABY.
Applicant also argues that the manner in which it is used on the website is in
the nature of a trademark. Specifically:
The critical inquiry in determining whether a designation
functions as a mark is how the public would perceive the
designation as a mark. In re Eagle Crest Inc., 96 USPQ2d
1227, 1229 (TTAB 2010). The Board has held that a mark
prominently displayed on a webpage is used in a manner
that a purchaser would recognize as a mark. In re
Valenite Inc., 84 U.S.P.Q.2d 1346 (TTAB 2007). The
Examine[r] erred in focusing merely on a single [instance]
of the mark in the specimen when rejecting the mark
based on “the front of a CD cover as noted in the bottom
left corner.” (12/6/2019 Office Action, p. 2). The
Application for the mark was for sound recordings and not
merely for a single CD. The Examiner should not have
relied on one use of the mark in the specimen to
determine whether the mark functioned as a trademark.
The Specimen submitted on November 27, 2019, displays
the mark in at least four positions. (6. Specimen of
TSDR). The Specimen was deemed acceptance [sic] as an
Allegation of Use the day after the December 6, 2019

3 Applicant never disputes that the album shown is a single work, and as discussed above,
waited until its reply brief to assert that Applicant “currently has album covers created for
ADHD Lullaby II.” Reply Brief, 10 TTABVUE 4. Not only is this assertion untimely, it also
does not clearly indicate there is a series. Different covers for a single work or minor
changes to a single work do not transform it into a series. See In re Arnold, 105 USPQ2d
1953, 1956 (TTAB 2013); Mattel Inc. v. Brainy Baby Co., 101 USPQ2d at 1143; and
Posthuma, 45 USPQ2d at 2014.
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Office Action was issued indicating that it at least met the
minimum requirements of a specimen according to
USPTO. (12/7/2019 Notice of Acceptance of AAU). The
mark ADHD Lullaby is displayed prominently in the
middle of the specimen which is a screenshot of the
Applicant’s webpage with both the TM symbol after the
mark as is used to denote that music provided by ADHD
Lullaby can be ordered from this source. The public will
recognize a mark prominently displayed on a website as a
trademark for the goods displayed on the webpage. In re
Valenite Inc. at 1349. The mark is also used as a mark in
the top banner of the webpage where a consumer can click
the link to purchase the music. The mark is displayed
again near a “Click Here” button at the bottom of the
specimen where a consumer can proceed to the location
for purchasing the music produced by ADHD Lullaby. The
Examiner incorrectly refused the mark for failing to
function as a trademark when it would be perceived by
the public as a trademark.
The cases upon which Applicant relies are not relevant to the issue presented
here. Eagle Crest involved a common phrase (ONCE A MARINE ALWAYS A
MARINE) widely used by third parties and its manner of use by the applicant
underscored it would be perceived “as an informational message.” Eagle Crest, 96
USPQ2d at 1231. Valentite concerns the manner of use of the applied-for mark;
whether the use on the specimen associated the mark with the applied-for goods
and included information necessary for ordering the goods. Valentite, 84 USPQ2d at
1348. Here, the issue is not the wide use of the phrase or the manner of use of the
phrase but rather what ADHD LULLABY is. The record shows that it is the title of
a single work and, as such, is not a mark.
Decision: The refusal to register is affirmed.