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Playing "bol": To what protection is a title entitled?

Scott J. Slavick

The Trademark Trial and Appeal Board has long held that the title of a single creative work—such as a book, article, video, film, or theatrical performance—is not entitled to trademark protection because a title ostensibly identifies a work and is inherently descriptive.

So, while a work's content may be protected under copyright laws, the title on its own does not create a protectable brand. Therefore, whether or not the name of a famous book can provide trademark rights seems a straightforward question. The answer is no.

Unfortunately, the TTAB's precedential ruling on Jan. 14, in Independent Media Corporation (PVT.) Ltd. v. BOL Enterprise (PVT.) Ltd. made short work of that supposed consistency. The Board dismissed Independent Media's motion for summary judgment along with its assertion of likelihood of confusion and fraud claims in its opposition to BOL Enterprise's application for the BOL mark. See T.T.A.B. Oppositions Nos. 91216909, 91216942, and 91219384.

The circumstances underlying Independent Media’s claims were simple. It had claimed prior use of the mark BOL for movies and films, pre-recorded DVDs, and similar goods for audio production services. But BOL Enterprise asserted that Independent Media’s priority claim was based solely on a Pakistani motion picture entitled Bol, which had briefly appeared in US theaters in 2011. BOL Enterprise maintained that under applicable case law, use of a term as the title of a single work did not create any trademark rights, and therefore Independent Media did not have priority of use.

So Independent Media failed on two claims: First, its alleged priority of use was based on that use of Bol as the title of a single creative work—use the Board has previously—and consistently—held not sufficient to constitute trademark use.

Second, Independent Media’s claim that BOL Enterprises had perpetrated a fraud on the USPTO was based on the former’s claim that the latter had made statements that it had exclusive rights in the applied-for BOL mark, despite BOL Enterprise’s knowledge of Independent Media’s own prior rights. However, the Board held that Independent Media had no such rights. Therefore, it determined, BOL Enterprise’s statements were not false and certainly not to the level of constituting a fraud.

That raises the next obvious question: What can be protected?

Trademark law protects the titles of literary works in two principal situations. The first is where a series of works is developed from a single title. The popular Chicken Soup for the Soul book series is a familiar illustration of this principle. The title has become associated with publications on a variety of topics and is entitled to trademark protection as the brand name for "paper goods and printed matter, namely, series of books in the field of inspiration and self-esteem," as stated in trademark registration records.

The second instance where protection is available arises when a title is applied to related products or services. We are all familiar with toys developed around movie titles—so-called "tie-ins": just think of all the licensed merchandise from Star Wars that debuted in stores on what Disney called "Force Friday." The title of a work becomes a protectable trademark when it is applied to toys or other products associated with the movie.

Star Wars is perhaps the most recognizable and most valuable franchise in movie history; but other, less recognized situations when protectable brands are created arise when the title of a work is used in providing services—such as business consulting services, newsletters, educational services and blogs—that relate to the published work. In these situations, that title becomes associated with both the original work and the related or ancillary service, and thus is entitled to trademark protection.

In Independent Media v. BOL Enterprise, the opposer asserted that it used BOL not only as a movie title, but also on soundtracks from the movie. The TTAB's majority disagreed. The decision explained that because of the soundtrack's association with the Bol film, and because only songs from the Bol film are in the soundtrack or compilation of songs, BOL Enterprises had successfully proven that the soundtrack or compilation of songs is based on or derived from the same creative work, namely, the Bol film, and thus does not create independent trademark rights in BOL.

In the absence of evidence demonstrating that BOL is used on at least two different creative works, the Board concluded as a matter of law that BOL is simply the title of essentially a single creative work.

Independent Media also claimed secondary meaning in the term BOL, but the Board pointed out that titles of single creative works are incapable of any trademark significance, even if proof of acquired distinctiveness is offered.

Because Independent Media could not establish priority, the Board granted BOL Enterprises' motion for summary judgment on its likelihood of confusion claim. In turn, this allowed the Board to make quick work of Independent Media's fraud claim because there was nothing fraudulent, or even false, about BOL Enterprises' statements that it owned exclusive rights in the mark.

There was a lone voice of dissent. Judge Frances Wolfson argued that the title of a single work doctrine should not apply when there exists a creative work and a derivative work that varies substantially in content from the original. Because Independent Media used the BOL mark on multiple creative works—that is, the movie and the soundtrack to the movie—and also used the term as a trade name, then the company should have been afforded the opportunity to show that the term has acquired distinctiveness. Judge Wolfson felt it was an error to hold as a matter of law that in such a case a party cannot establish priority. Even though the standard of proof may be high, she felt Independent Media should at least have been given the opportunity to make its case.

Wolfson would also not summarily dismiss the fraud claim because, contrary to the majority's view, Independent Media did properly make of record a temporary injunction order from a Pakistani court, and therefore she felt that a genuine issue of material fact existed as to the impact of that order on this case.

Interestingly, the Board made no mention of its November 2014 non-precedential decision in In re King, which held that the title of a single DVD was registrable as a trademark if the applicant could prove acquired distinctiveness.

Might I be entitled to ask this rhetorical question: Why be consistent when being inconsistent is so much more interesting?

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Reprinted with permission from the March 21, 2016 edition of Inside Counsel© 2016 ALM Media Properties, LLC. All rights reserved. Further duplication without permission is prohibited, contact 877-257-3382 or reprints@alm.com.

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