Title of single work is not registrable

United States of America
In Mattel Inc v The Brainy Baby Company LLC (Cancellation 92052047, December 30 2001), the Trademark Trial and Appeal Board (TTAB) has issued a precedential decision concerning the distinction between the title of a single work and the title of a series.       
 
Mattel Inc petitioned to cancel the registration of the mark LAUGH & LEARN (and design) for a “series of pre-recorded videotapes, audio cassettes, digital video discs and compact discs featuring live and animated educational materials intended to develop and improve the creative and intellectual faculties of infants and children”. The petition to cancel was based on the allegations that: 
  • when The Brainy Baby Company LLC filed the application for the mark LAUGH & LEARN, the mark was not in use for a series of products, but was instead only the title of a single work; and
  • there was a likelihood of confusion with Mattel’s mark LAUGH & LEARN for infant toys. 
Mattel later added a claim for abandonment. Mattel then moved for summary judgment, arguing that the mark was being used only as a title of a single work when The Brainy Baby Company filed its application, and not as a title of a series of works.
 
The TTAB observed that titles of creative works do not qualify for registration as trademarks, unless they are used to identify the source of a series of creative works. The TTAB, relying on the well-established TTAB, Court of Customs and Patent Appeals and Federal Circuit case law on this issue, held that a title of a single work is not registrable because it merely describes the creative work, rather than identifying its source. The TTAB reaffirmed the policy behind this rule stating that:
 
[b]ecause a trademark can endure for as long as the trademark is used, at the point that copyright protection ends and others have to use the underlying work, they must also have the right to call it by its name.”
 
The Brainy Baby Company sold its featured programme in two different formats: DVDs and VHS tapes. The TTAB pointed out that it could not identify any differences in the content of the programme in the VHS tape and the DVD. They both had a 45-minute learning programme geared toward toddlers. The fact that the DVD included additional features, such as “scene selection” and “extras” was insufficient to show that the VHS and DVD formats were a series of works. The TTAB added that the two formats were no more of a series “than the variations in a live performance that occur from night to night transform the title of a single production into a series”. Furthermore, the TTAB also noted that the programme was promoted in the Brainy Baby Company’s catalogues as a single work available in both DVD and VHS versions. The TTAB explained that:
 
[c]onsumers will understand that the DVD version, even with the enhancements, is merely the same work as appears on the VHS tape, both of which have the title LAUGH & LEARN, rather than regarding the DVD as another item in a series bearing the mark LAUGH & LEARN.” 
 
The TTAB indicated that there “must be clear evidence that the mark identifies a series of different works”. However, according to the TTAB, the evidence proved only the existence of variations of a single work, not a series as indicated in the identification of goods set forth in the registration. In light of the preceding case law, the TTAB granted Mattel’s motion for summary judgment on the grounds that The Brainy Baby Company had not used LAUGH & LEARN as a trademark for a series of creative works. Based on this finding, the Brainy Baby Company’s registration was cancelled.

Laure Hadas-Lebel, Arent Fox LLP, Washington DC

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