Sheila Atchley

Trademark Trial and Appeal Board

Jan 30, 2001

No. 75408739 (T.T.A.B. Jan. 30, 2001)

Serial No. 75/408,739
1
1/30/00 Paper No. 9
CEW
UNITED STATES PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Sheila Atchley
___________
Serial No. 75/408,739
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James C. Nemmers, Esq. for applicant.
John Alumit, Trademark Examining Attorney, Law Office 102
(Thomas V. Shaw, Managing Attorney).
____________
Before Simms, Walters and Holtzman, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Sheila Atchley has filed a trademark application to
register the mark shown below for “pre-recorded audio tapes
for relaxation and sleep inducement.”1

1 Serial No. 75/408,739, in International Class 9, filed December 19,
1997, based on use in commerce, alleging first use and first use in
commerce as of October 11, 1997.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial No. 75/408,739
2
The Trademark Examining Attorney has finally refused
registration under Sections 1, 2 and 45 of the Trademark
Act, 15 U.S.C. 1051, 1052 and 1127, on the ground that
applicant’s proposed mark, as used on the specimens of
record, does not function as a trademark; rather, it merely
identifies the title of a single audio work.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
The determination in this case is based solely upon
the record before us. The court, in In re Bose Corp., 546
F.2d 893, 192 USPQ 213, 215 (CCPA 1976), stated that
“[b]efore there can be registration, there must be a
trademark, and unless words have been so used they cannot
qualify.” (citation omitted.) Noting that “the classic
function of a trademark is to point out distinctively the
origin of the goods to which it is attached,” the court
stated further (citations and footnote omitted):
An important function of specimens in a trademark
application is, manifestly, to enable the PTO to
verify the statements made in the application
regarding trademark use. In this regard, the
manner in which an applicant has employed the
asserted mark, as evidenced by the specimens of
record, must be carefully considered in
determining whether the asserted mark has been
used as a trademark with respect to the goods
named in the application.
Serial No. 75/408,739
3
Id. at 215-216.
The specimen, and only evidence of use of the mark
herein, consists of the jacket liner of an audio tape
cassette. The proposed mark appears on the jacket liner,
as shown below:
The Examining Attorney contends that the mark is not
registrable because it appears on the specimens as the
title of a single audio work; and that, as with the title
of a single literary work, the title of a single audio tape
cassette is merely descriptive of the specific audio work
contained on the tape cassette.
Applicant concedes that SWEET DREAMS is the title of a
single audio work, but contends that the mark herein
includes a design element and, as such, is not merely a
title. Applicant argues, further, that SWEET DREAMS is not
the title of a single work because she intends to produce a
series of audio tapes and use the mark herein as the title
for that series.
Serial No. 75/408,739
4
Although this case involves the title of a single
audio tape, it is directly analogous to cases involving the
registrability of the title of a single literary work. In
the seminal case on the registrability of titles of books
as trademarks, In re Cooper, 254 F.2d 611, 117 USPQ 396,
398 (CCPA 1958),2 the court found the title of a book to be
unregistrable as a trademark for books because,
essentially, titles of books are considered to be nothing
more than the name by which the book may be identified in
much the same way that other items of merchandise are
identified. The court opined (supra at 400):
[H]owever arbitrary, novel or non-descriptive of
contents the name of a book – its title – may be,
it nevertheless describes the book. Appellant
has nowhere attempted to answer the question, How
else would you describe it – What else would you
call it? If the name or title of a book were not
available as a description of it, an effort to
denote the book would sound like the playing of
the game “Twenty Questions.”
However, the court reiterated the general principle that
whether certain subject matter is a trademark in connection
with books must be determined on the specific facts
pertaining to the manner of use thereof (supra at 398):

2 See also, In re Scholastic Inc., 223 USPQ 431 (TTAB 1984) (Scholastic
I); Paramount Pictures Corp. v. Romulan Invasions, 7 USPQ2d 1897, 1899
(TTAB 1988); In re Hal Leonard Publishing Corp., 15 USPQ2d 1574 (TTAB
1990); In re Scholastic Inc., 23 USPQ2d 1774 (TTAB 1992) (Scholastic
II); and In re Phil Postuma and Cordell Langeland, 45 USPQ2d 2011 (TTAB
1998).
Serial No. 75/408,739
5
No one has asserted that a word may not be used
as a trademark for books or that there 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. Appellant
appears to assume that [its alleged mark] has
been used as a trademark for books in asking that
it be registered, but that is what we have to
decide. 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.
(emphasis in original.)
Cooper and the cases following it have consistently
reaffirmed the principle that subject matter that is merely
the title of a single work is not used as a trademark.
While subject matter used to identify a series of
works may be a registrable trademark, such use is not the
case herein.3 Applicant contends that she has a bona fide
intention to use the alleged mark on a series of audio
tapes, but she admits that she has not done so yet.
However, applicant chose to file this application based on

3 The Board, in In re Scholastic Inc., 23 USPQ2d 1774 (TTAB 1992)
(Scholastic II), found THE MAGIC SCHOOL BUS, which formed part of the
title of each book in a series of children’s books, to be a registrable
trademark in connection with “a series of non-fiction picture books for
children.” In that case, there was substantial evidence showing the
prominent and distinctive display of the phrase THE MAGIC SCHOOL BUS on
book covers in the series; as well as evidence of reviews in widely
circulated publications referring to “the Magic School Bus series” and
similar terminology; substantial promotional materials for “THE MAGIC
SCHOOL BUS” series; and recognition by the public of the phrase as a
mark. While this case is inapposite to the extent that it pertains to
the use of a phrase to identify a series of books, which is not the
case herein, it demonstrates the nature and scope of an evidentiary
showing which may establish trademark use of a phrase in connection
with books.
Serial No. 75/408,739
6
use of the alleged mark on her single audio work, rather
than based upon a bona fide intention to use the alleged
mark on a series of audio works. As indicated above, we
are constrained to consider the record as it appears before
us. Thus, we must consider the issue of registrability
based on applicant’s admitted use of the alleged mark on
only a single audio work.
Applicant also argues that her alleged mark contains a
design element and, as such, is not simply the title of a
single work. Even if a design would permit trademark
registration of what is otherwise a single title of an
audio work, which we do not decide herein, the design in
this case is so minimal as to be of little significance in
the overall impression created by the title as it appears
on the specimen. The script in which the wording appears
is fairly ordinary and the drawing of the sheep near the
initial “S” in SWEET DREAMS is so small as to be
unrecognizable except upon careful inspection, particularly
in the actual size shown on the specimen.
Finally, applicant argues that the specimens show
“Sweet Dreams” to be the owner of the copyright in the
graphics and text on the specimen and, although not
mentioned by applicant, the content of the audio tape.
Whatever rights applicant may claim or, in fact, have under
Serial No. 75/408,739
7
copyright law in connection with her audio tape are of no
relevance to whether the alleged mark is registrable as a
trademark. We also note that applicant has placed a “TM”
adjacent to her alleged mark on the specimen. However,
applicant’s intention that this material be considered a
trademark does not make it so. See In re Frederick Warne &
Co., Inc., 218 USPQ 345 (TTAB 1983). It remains, on the
record before us, the title of a single audio work.
In conclusion, for the reasons stated we find that
applicant’s alleged mark is not registrable because it is
the title of a single audio work.
Decision: The refusal to register is affirmed.