A recent decision by the Trademark Trial and Appeal Board serves as a good reminder that the title of a single work cannot be a trademark. Independent Media Corporation (PVT) Ltd. v. BOL Enterprise (PVT) Ltd., decided January 14, 2016.
In this case, BOL Enterprise filed a trademark application for the mark “BOL.” Independent Media Corporation (IMC) opposed the application by commencing an action in the TTAB, asking the TTAB to reject BOL Enterprise’s application because IMC had used the trademark first.
Once the case was underway, BOL Enterprise moved for summary judgment against IMC, arguing IMC lacked standing because IMC did not actually use the mark in question as a trademark. Instead, BOL Enterprise alleged that IMC used the mark only in connection with a single movie called BOL, which was released briefly in the United States in 2011. IMC fought back, arguing it used the trademark on the movie, the soundtrack and on independent songs and a collection of songs. The TTAB didn’t buy the argument. It said the movie and the soundtrack, which were entitled BOL, were all part of a single creative work. As for the other alleged uses, IMC did not actually submit any evidence of use of the trademark BOL on independent songs or a collection of songs. Thus, relying on its longstanding precedent that the title of a single creative work is not a trademark, it dismissed the opposition.
The title of a single work cannot serve as a trademark. On the other hand, the title of a series of works – with each individual work or episode having its own title – can serve as a trademark. Also, in order to maintain an opposition, the opposer (here, IMC) must show that it would be damaged if the registration applied for were to issue. IMC alleged it would be damaged because it already used the trademark that was the subject to the application. But BOL Enterprise demonstrated that in fact, IMC did not use BOL as a trademark. So what is in a title? Sometimes a trademark, but not when it is the title of a single work.