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And the Award for Best Trademark Goes To…

While the Oscars aren’t technically a legal holiday, the spirit of the season does seem to fit in with my series on Holiday Trademarks.

The Academy of Motion Picture Arts & Sciences owns several Oscar-related trademarks, including:

A design trademark for the image of the little gold man himself.







What about the names of the movies themselves? As if you didn’t already have it memorized, the Trademark Manual of Examining Procedure, 8th Edition, Section 1202.08 (stay with me here) states, in part: “The title, or a portion of a title, of a single creative work must be refused registration…unless the title has been used on a series of creative works.” (Italics are mine). So, technically, you can go ahead and call your movie “The Artist.” Actually, it’s not uncommon for unrelated movies to share the same title. The Internet Movie Database lists roughly 26 movies with the title “The Artist” (although some are translations from different languages) – including five in 2011 alone.

Which Oscar nominees in 2012 would fit the category of one in a series of creative works? My best guess:

  • The Muppets (nominated for Original Song)
  • Paradise Lost 3: Purgatory (Documentary Feature)
  • Transformers: Dark of the Moon (Sound Editing, Sound Mixing, Visual Effects)
  • Kung Fu Panda 2 (Animated Feature)
  • Harry Potter and the Deathly Hallows Part 2 (Visual Effects, Art Direction, Makeup)
  • Rise of the Planet of the Apes (Visual Effects)
  • The Adventures of Tintin (Original Score)

What about Hugo, The Descendants, Moneyball, Extremely Loud & Incredibly Close, War Horse, and The Help, all of which were based on books? Couldn’t the movies be used as evidence that they were part of a series of creative works – the book being the first in the series; the movie being the second? That argument will most likely fail, for two reasons. First, these movies are generally considered adaptations of the original work, not “the next chapter in the story,” and therefore not really a series of works at the term is generally understood. Second, and more crucially, trademark registrations are divided into classes of goods and services. Books usually fall into class 016. Movies are in class 009. So if you’re applying to register the name of the movie as a trademark in class 009, you will have to show that the name applies to a series of works within that class. This is one reason why there are so many sequels to popular movies. Although probably a more important reason is that sequels to popular movies tend to make a lot of money.

Enjoy your SUNDAY AT THE OSCARS®, everybody.

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