Re: Dracula

On 21, July 1998, Robert Cumbow <cumbr[_at_]perkinscoie.com> wrote:
>
> Mark Lemley <mlemley[_at_]mail.law.utexas.edu> wrote:
> >
> > Bob Cumbow <cumbr[_at_]perkinscoie.com> wrote:
> > >
> > > Actually, the title of a single work does not function as a
> > > trademark and will not be granted trademark registration. To
> > > become a trademark, the title must be the title of a series of
> > > works, or be associated with the continuing sale of merchandise,
> > > not of just a single motion picture or other work.
> >
> > (1) I know this is the PTO rule; but is there caselaw that denies
> > protection even on a common-law theory in such cases?
>
> For an intelligent discussion, see McCarthy on Trademarks and Unfair
> Competition, Sec. 10.02. The controlling case is Application of
> Cooper, 254 F2d 611 (1958). Some (including McCarthy) argue that the
> Trademark Office's reliance on this case is misplaced. In practice,
> the Trademark Office will register titles of single works upon a
> showing of secondary meaning. But for registration ab initio, the
> mark must be used as the title of a series, or as an index of the
> source of goods or services.
>
> Which leads me to Mark's next point:
> >
> > what's the rationale for this rule? Surely if I sell only one
> > product under my trademark, I can still protect it. Why is the
> > result different for artistic works?
>
> If you sell only one product under your mark, your mark is still an
> indicator of source, and thus is still a trademark. If, for example,
> Campbell's made only a single kind of soup, say, tomato soup, the mark
> "Campbell's" would still be a source indicator. But the title of a
> work is not a source indicator. Take, for example, THE LOST WORLD.
> It doesn't function as a source indicator, because, when we see the
> title, we don't know if it refers to a novel by A. Conan Doyle, or
> a novel by M. Crichton, or a film by S. Spielberg. More importantly,
> the title merely tells us what the work is, not who it's coming from.
> Trademarks, on the other hand, do not tell us what the product or
> service is (that's why generic terms are unregistrable and descriptive
> terms are denied registration without a showing of secondary meaning);
> they tell us who the product or service comes from.
>
> ...That, at least, is my theory as to why the Trademark Office does
> not view titles as registrable trademarks. But I admit it leads to
> problems---most notably when the product that a source sells is also
> a titled work. For example, Nintendo is clearly a trademark, and is
> recognized as an indicator of source on video games as well as video
> game hardware. But what about the individual games themselves? Each
> of them has a title (e.g. "Dr. Mario", which is a registrable
> trademark because it is a product name. But isn't it also the title
> of a work? If software programs are protected by copyright, then
> they are works of authorship ... so how is it that the name of a work
> of authorship like DR. MARIO is still a registrable trademark, while
> the name of a work of authorship like COLD MOUNTAIN is not a trademark
> until/unless it becomes associated with some product or service other
> than the work itself?
>
> It's a point worth further discussion.

Does anyone out there know for sure about Universal's actions in this "Dracula" business?

Michael A Scarpitti
Assistant Editor
Materials Evaluation
1711 Arlingate Lane
PO Box 28518
Columbus, Ohio 43228-0518
800 222-2768 Ext 207
614 274-6003 Ext 207
Fax 614 274-6899
<mscarpit[_at_]asnt.org> Received on Wed Jul 22 1998 - 15:10:26 GMT