Skeeziks, LLC

Trademark Trial and Appeal Board

Sep 26, 2008

No. 78435362 (T.T.A.B. Sep. 26, 2008)

Mailed: September 26, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Skeeziks, LLC
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Serial No. 78435362
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Robert L. Powley of Powley & Gibson, P.C. for Skeeziks,
LLC.

Natalie Polzer, Trademark Examining Attorney, Law Office
108 (Andrew Lawrence, Managing Attorney).
_______

Before Drost, Kuhlke and Cataldo, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Skeeziks, LLC, applicant, has filed an application to
register as a trademark on the Principal Register the mark
TICK, TICK...BOOM! in standard characters for “musical
sound recordings; prerecorded audio and video cassettes,
tapes and discs featuring performances of a musical play”
in International Class 9; “printed publications, namely,
songbooks; lyrics and music printed in sheet or book form;
posters; greeting cards; and post cards” in International
Class 16; “housewares, namely, mugs and glassware” in
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78435362
2
International Class 21; “clothing, namely, shirts and hats”
in International Class 25; and “entertainment services in
the nature of a theatrical performance of a musical play”
in International Class 41.1
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
designation TICK, TICK...BOOM!, as used on the specimens of
record, does not function as a trademark for the goods and
services in International Classes 9, 16, and 41, because it
is the title of a single work, and for the goods in
International Classes 21 and 25, because it is mere
ornamentation.
Applicant appealed these refusals and filed a request
for reconsideration. In response to the request for
reconsideration, the examining attorney withdrew the
refusals as to all of the goods in International Classes 21
and 25 and as to the “posters, greeting cards and post
cards” in International Class 16. On March 4, 2008, the
Board resumed the appeal and briefs were filed.

1 Application Serial No. 78435362, filed June 15, 2004, alleging
June, 2001 as the date of first use and first use in commerce for
the goods in International Classes 9, 16, 21, and 25, and
January, 1990 for the services in International Class 41.

Serial No. 78435362
3
In view of the examining attorney’s decision on
reconsideration, this appeal only pertains to the refusal
based on the assertion that the proposed designation is the
title of a single work as applied to the goods and services
listed in International Classes 9 and 41 and the “printed
publications, namely songbooks, lyric and music printed in
sheet or book form” listed in International Class 16.
Thus, regardless of the outcome regarding the specified
goods and services at issue in this appeal, applicant’s
mark may be published for opposition for at least the
remaining goods in the application. 37 C.F.R. §2.65(a).
It is well-established that a title of a single work
is not registrable. In re Cooper, 254 F.2d 611 117 USPQ
396, 400 (CCPA 1958), cert. denied, 358 U.S. 840 (1958); In
re Scholastic Inc., 223 USPQ 431 (TTAB 1984). This concept
is equally applicable to musical recordings, printed
publications and live theatrical productions. See In re
Posthuma, 45 USPQ2d 2011 (TTAB 1998) and cases cited
therein.
Applicant does not dispute this, rather applicant
argues that its designation “is not the title of a single
work and that the mark identifies a series of distinct
creative works and therefore, properly serves as a
trademark for applicant’s goods and services.” Br. p. 3.
Serial No. 78435362
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In support of its position that TICK, TICK...BOOM! is used
on a series of creative works, applicant submitted copies
of two copyright registrations. Applicant states that it
has submitted the “copyright registrations in two
substantial distinct plays with Applicant’s mark as the
title, not to demonstrate that it owns a valid trademark,
but to show that there are two distinct creative works that
have Applicant’s mark as the title.” Br. p. 6. Applicant
argues that “since copyright law is applicable to the
determination of whether works are both creative and
distinctive, Applicant submits that its copyright
registrations are probative and substantially demonstrate
that Applicant has used its mark as the title of at least
two distinct creative works.” Br. pp. 6-7.
As stated by applicant, the “test for whether the
title of a work may be registrable is whether the title has
been used on a series of creative works.” Copyright
registrations are not evidence of use of the term in
commerce, as defined by Section 45 of the Trademark Act.
15, U.S.C. §1127. Thus, there is nothing in the record to
establish that applicant has used the designation TICK,
TICK...BOOM! on a series for the goods and services at
issue in this appeal. In that regard we note that, while
Copyright Registration No. PA-1-295-639 (the derivative
Serial No. 78435362
5
work) lists a creation date and publication date, Copyright
Registration No. PAu-2-157-266 (the previous registration)
only lists a creation date.
Finally, we are not convinced that the determination
under copyright law that a work registered as a derivative
work is the equivalent of a series for purposes of
trademark registration. As the examining attorney stated,
while the copyright registrations serve to “show the
historical artistic progression of the one play TICK, TICK
...BOOM!” they do not demonstrate a series of different
creative works. Br. p. 9. The claim in the first
registration is for “a musical play” whereas the claim in
the second registration is limited to “remaining music,
song lyrics, script and dialog.”
The examining attorney compared the evolution of the
play as shown by the original copyright and the copyright
based on a derivative work to the evolution of a theatrical
production which was expressly rejected as evidence of a
series of theatrical shows in In re Posthuma, supra. As
stated by the examining attorney:
While the applicant’s new material represented an
original work of authorship sufficient to secure
a second copyright registration in connection
with the play Tick, Tick...Boom!, it does not
demonstrate use of the title of the play on a
series of distinct theatrical productions.
Rather, the applicant’s copyright registrations
Serial No. 78435362
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point to the fact that the applicant’s play has
undergone adaptations as part of the creative
process but remains a single musical play
entitled Tick, Tick...Boom!” Br. p. 11.

Based on this record, we agree with the examining
attorney that the second registration does not evince a
series of plays but rather merely indicates “that some
additional material was added to the original play as part
of the overall creative process” of the one work and
“[c]ontrary to the applicant’s assertions that multiple
copyrights show evidence of a series, the submitted copies
of two copyright registrations merely show that the play
entitled Tick, Tick,...Boom! was adapted in 2001.” Br. p.
10.
Moreover, the definition of a derivative work under
the Copyright Act supports the examining attorney’s
position that a derivative work is not a series for
purposes of establishing source identifying significance in
a proposed mark. A derivative work is defined as:
A work based upon one or more preexisting works,
such as a translation, musical arrangement...
abridgment...or any other for in which a work may
be recast, transformed, or adapted. A work
consisting of editorial revisions, annotations,
elaborations, or other modifications, which, as a
whole, represent an original work of authorship,
is a “derivative work.”

Copyright Act, 17 U.S.C. §101.

Serial No. 78435362
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Citing to Section 1202.08(c) of the Trademark Manual
of Examining Procedure, the examining attorney correctly
notes that a “series is not established when only the
format of the work is changed and use of the title on
unabridged and abridged versions of the same work does not
establish a series.” Br. p. 10.
In view of the above, based upon consideration of all
the evidence in the record, we find that applicant has
failed to establish that the title TICK, TICK...BOOM! has
been used on a series of creative works.
Decision: The refusal to register on the grounds that
the proposed mark is the title of a single work is affirmed
as to all of the goods and services in International
Classes 9 and 41 and as to the goods identified as “printed
publications, namely songbooks, lyric and music printed in
sheet or book form” in International Class 16 and the
application will proceed to publication as to the remaining
goods.