BULKY DOCUMENTS
`
`(Exceeds 100 pages)
`
`Filed:
`
`4[O4[2011
`
`Title: REPLY BRIEF IN SUPPORT OF PETITIONER’S
`
`MOTION FOR SUMM. |[]DGMENT, DECLARATION
`OF FRANK CHANG DECLARATION OF WAYNE
`
`
`KOLB, DECLARATION OF FRANK MURRAY {W ITH
`EXHIBITS A, B AND C}, DECLARATION OF VVILLIAM
`LEHNER
`TH EXHIBITS A B C 1 — 32 AND D .
`
`Part
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`lof 1
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`

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`I I
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`Cl N
`N
`FT:-j L L P
`Intellectual Property Law
`
`KE N&Y
`
`April 1, 2011
`
`By Federal Express
`Trademark Trial and Appeal Board
`U.S. Patent and Trademark Office
`
`Madison East, Concourse Level Room C 55
`600 Dulany Street
`Alexandria, VA 22314
`
`J. Coy Stull
`Direct 202.220.4413
`r
`ll@k
`.
`CSU
`enyoncom
`1500 K Street, N.W.
`Suite70O
`Washington, DC 20005-1257
`202.220.4200
`Fax 202.220.4201
`
`_
`
`Ll
`
`Q
`
`Re:
`
`Mattel, Inc. v. The Brainy Baby Company, LLC (Canc. No. 92052047) (TTAB)
`
`To Whom It May Concern:
`
`Please find enclosed Mattel's Reply Brief In Support of Petitioner’s Motion for Summary
`Judgment and four Declarations (with Exhibits) (Second Declaration of William Lehner,
`Declaration of Frank Murray, Declaration of Frank Chang, and Declaration of Wayne Kolb).
`Attached to the Declaration of Frank Murray are Exhibits A, B and C. Attached to the Second
`Declaration of William Lehner are Exhibits A, B, C(1)-(32), and D.
`
`Mattel has already partially filed its Reply Brief and Declarations electronically via ESTTA.
`However, certain physical exhibits could not be filed electronically and are included within this
`filing. The physical exhibits included in this filing but not filed electronically are as follows.
`
`Exhibit A tothe Second Declaration of William Lehner
`Exhibit B to the Second Declaration of William Lehner
`Exhibit A to the Declaration of Frank Murray
`Exhibit B to the Declaration of Frank Murray
`Exhibit C to the Declaration of Frank Murray
`
`As part of the electronic filing, slip sheets with pictures were inserted for the physical exhibits
`listed above. As a courtesy to the Board, Mattel has included its entire reply brief filing along
`with the physical exhibits listed above. Also enclosed, for reference purposes is Electronic
`Filing Receipt #ESTTA401217
`
`;il|llil|lllIlllllllllllllllllll||||lll|l||l|ll|||
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`04-04-2011
`
`i_l
`
`pale.-,1.
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`l_t rr1gr.;./In rail Rcpi Ul. #72
`
`New York Washington, DC
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`Silicon Valley
`
`wvvw.kenyon.com
`
`

`
`|{(
`
`Trademark Trial and Appeal Board
`April 1, 2010 _
`Page 2
`
`Regards,
`
`KENYON & KENYON LLP
`
`
`
`ENCLOSURE
`
`

`
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`Filing date:
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`04/01/2011
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`ESTTA Tracking number: ESTTA40l217
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`%v1l4l¢V<J44—4¢44-4641...............................W
`T Party
`
`Mattel, inc.
`
`l
`
`WILLIAM M MERONE
`
`i
`
`KENYON & KENYON LLP
`;
`' Correspondence 1500 K ST NW
`Address
`WASHINGTON, DC 20005
`UNITED STATES
`tmdocketdc@kenyon.com, wmerone@kenyon.com, cstull@kenyon.com
`
`Reply in Support of Motion
`
`J. Coy Stull
`
`cstul1@kenyon.com, wmerone@kenyon.com, ddelizio@kenyon.com
`
`
`
`‘
`i
` Submission
`r__.m_...W.._e_..__a..__.
`Filer's Name
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`F
`
`Filer's e-mail
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`Date
`
`Il
`I
`
`Attachments
`
`
`
`- Signature
`/J. Coy Stull/
`
`04/01/2011
`
`
`LAUGH LEARN -- Reply Brief ISO Motionf or Summary Judgment.pdf
`
`
`( 24 pages )(22l929 bytes )
`Second Declaration of William Lehner (w Exhibits).pdf ( 80 pages )
`
`
`(7395901 bytes)
`Declaration of Frank Murray (w Exhibits).pdf ( 10 pages )(210251 bytes)
`Declaration of Frank Chang.pdf ( 2 pages )(56085 bytes )
`
`
`Declaration of Wayne Kolb.pdf ( 1 page )(l76289 bytes )
`
`
`
`Return to ESTTA home page Start another ESTTA filing
`
`I HOME I INDEXI SEARCH I eBUSlNESS I CONTACT US I PRIVACY STATEMENT
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`MATTEL, lNC.,
`
`Petitioner,
`
`v.
`
`Cancellation No. 92052047
`
`Registration No.: 3214699
`
`THE BRAINY BABY COMPANY, LLC
`
`Registrant.
`
`REPLY BRIEF IN SUPPORT OF
`
`PETITIONER’S MOTION FOR SUMMARY JUDGMENT
`
`Edward T. Colbert
`William M. Merone
`
`Erik C. Kane; J. Coy Stull
`KENYON & KENYON LLP
`
`1500 K Street, N.W.; Suite 700
`Washington, D.C. 20005
`Tel.: (202) 220 — 4200
`Fax: (202) 220 — 4201
`
`Counsel for Petitioner,
`Mattel, Inc.
`
`

`
`TABLE OF CONTENTS
`
`Page
`
`INDEX OF AUTHORITIES .................................................................................... ..ii
`
`REPLY ARGUMENT ............................................................................................. ..l
`
`A.
`
`B.
`
`Registrant Was Not Using LAUGH & LEARN
`& Design as a Trademark ................................................................ ..4
`
`Offering the Same “Laugh & Learn” Video Program
`in Two Different Formats (VHS and DVD) Does Not
`Amount to Use of the LAUGH & LEARN & Design
`Mark for a “Series” of Creative Works ............................................ ..6
`
`l.
`
`2.
`
`Registrant Has Only Used the LAUGH & LEARN
`& Design Designation on a Single Creative Work .............. ..8
`
`The Content ofthe “Laugh & Learn” DVD is Not
`“Interactive,” Nor Does it “Change” With Each Viewing.....l2
`
`C.
`
`Using the LAUGH & LEARN & Design Designation on a
`Single VHS Tape and on a Single DVD Does Not Establish
`Use on the Recited Goods ............................................................... ..16
`
`CONCLUSION ........................................................................................................ ..19
`
`

`
`INDEX OF AUTHORITIES
`
`Cases
`
`321 Studios v. Metro Goldwyn Mayer Studios Inc.,
`70 USPQ2d 1028 (ND. Cal. 2004)
`
`In re Author Services,
`2003 WL 21979843 (TTAB 2003)
`
`Beech Aircraft Corporation v. Lightning Aircraft Company Inc.,
`1 USPQ2d 1290 (TTAB 1986)
`
`In re Cooper,
`1 l7 USPQ 396 (CCPA 1958)
`
`Coretec Industries, Inc. v. Sum Holding L.P.,
`949 F.2d 42 (2"d Cir. 1991)
`
`Harris v. General Motors Corp.,
`201 F.3d 800 (6‘“ Cir. 2000)
`
`Herbko International Inc. v. Kappa Books Inc.,
`64 USPQ2d 1375 (Fed. Cir. 2002)
`
`Genesco, Inc. v. Levi Strauss & Co.,
`219 USPQ 1205 (TTAB 1983)
`
`O'Connor v. Penn. R.R. Co.,
`308 F.2d 911 (2"" Cir. 1962)
`
`Shalom Children's Wear Inc. v. In- Wear A/S,
`
`26 USPQ2d 1516 (TTAB 1993)
`
`Sweats Fashions Inc. v. Pannill Knitting Co. Inc.,
`4 USPQ2d 1793 (Fed. Cir. 1987)
`
`Wood v. US.,
`342 F.2d 708 (8‘“ Cir. 1965)
`
`Statutes
`
`15 USC §§ 1051, 1052, 1127
`
`

`
`Rules and Regulations
`
`37 CFR §§ 2.126
`
`Other A uth orities
`
`Trademark Trial and Appeal Board Manual ofProcedure (“TBMP ”)
`(2"“ ed., rev. 1), § 106.03
`
`Trademark Manual ofExamining Procedure ( “TMEP ”)
`(7‘“ ed.), §§ 904.04, 1202.08
`
`iii
`
`

`
`REPLY ARGUMENT
`
`As Petitioner, Mattel, Inc., detailed in its motion for summary judgment (D.I. 15),
`
`U.S. Reg. No. 3214699 for LAUGH & LEARN & Design should be cancelled because
`Registrant, The Brainy Baby Company, LLC, was not using the designation as a mark for
`
`the goods recited in the registration at the time the underlying use-based application
`
`(Serial No. 78453907) was filed. Registrant was only using the LAUGH & LEARN
`
`composite design as the title for a single creative work when it filed its application, which
`
`use was legally insufficient to support registration for the recited goods (namely, a “series
`
`of prerecorded videotapes, audio cassettes, digital video discs and compact discs”).
`
`In its opposition brief, Registrant claims that it has supposedly raised a genuine
`
`issue of material fact with respect to its lack of trademark use. See, e.g., Registrant ’s
`
`Brief (“Reg. Br.”), pp. 6, 9, 10. However, that is not so.
`
`In fact, Registrant’s papers
`
`confirm that Registrant was using the LAUGH & LEARN & Design designation only in
`
`connection with its 45-minute “Laugh & Learn” video program (available in both VHS
`
`and DVD formats), just as Mattel maintained. See id., p. 7 (admitting that Registrant did
`not use the LAUGH & LEARN & Design designation on any goods “other than the
`
`LAUGH & LEARN video tape and DVD”) (emphasis removed); accord Aflidavit of
`
`Dennis P. Fedoruk (“Fedoruk Ajf”), 1] I6 (attached to Reg. Br.); cf Petitioner’s Brief
`
`(“Pet. Br.”) (D.l. 15), pp. 2-5, 10. Moreover, Mattel has now submitted copies of both
`the VHS and DVD versions ofthe “Laugh & Learn” program for the Board’s comparison
`
`and review, see Declaration of Frank Murray (“Murray Decl.”), 111] 3-4, Exhibits A, B
`
`(providing electronic copies of the “Laugh & Learn” video tape and digital video disc);
`
`accord 37 CFR § 2.l26(b); TBMP, § 106.03; see also Second Declaration of William
`
`

`
`Lehner (“Second Lehner Decl.”), 1111 4-5, Exhibits A, B (submitting physical copies of the
`
`“Laugh & Learn” video tape and digital video disc)”, meaning that there cannot be a
`
`genuine factual dispute about their contents. See, e.g., Harris v. General Motors Corp.,
`
`201 F.3d 800, 803 n.l (6”‘ Cir. 2000) (“Obviously, where the only evidence submitted by
`
`a non-movant is contradicted by indisputable physical facts, there can be no genuine issue
`
`of material fact for trial.”) (emphasis in original); O'Connor v. Penn. R.R. Co., 308
`
`F.2d 911, 914, 915 (2"d Cir. 1962) (explaining that it is not reasonable, when deciding a
`
`motion for judgment as a matter of law, to draw interference in the non-movant’s favor
`
`“where the uncontested documentary evidence
`
`overwhelms the [non-movant’s]
`
`testimony”) (“[t]his is not a case where two competing versions of the facts, depending
`
`upon the credibility of oral testimony, are to be resolved”); but cf Reg. Br., pp. 9-10
`
`(erroneously suggesting that because Registrant’s witness disagrees with Mattel’s
`
`characterization of the physical evidence, a “genuine issue” supposedly exists for trial).
`
`This case is therefore ripe for summary judgment, with the sole issue being
`
`whether Registrant’s use of the LAUGH & LEARN & Design designation on both a VHS
`
`tape and a DVD of the same “Laugh & Learn” program was sufficient to qualify as use of
`
`the designation as a mark for a “series of prerecorded videotapes, audio cassettes, digital
`
`video discs and compact discs,” as recited in the subject application. Accord Reg. Br., p.
`
`' These two physical items (the VHS tape and the DVD disc) were referenced, discussed, and cited by
`Registrant in its opposition brief. See Reg. Br., pp. 9-10; Fedoruk Afl, 111] 12-13, Exhibits C-E. The actual
`tape may therefore properly be considered in this reply. See, e.g., Shalom Children's Wear Inc. v. In-Wear
`A/S, 26 USPQ2d 1516, 1517 (TTAB 1993); Genesco, Inc. v. Levi Strauss & Co., 219 USPQ 1205, 1208 n.4
`(TTAB 1983); cf also, e.g., Coretec Industries, Inc. v. Sum Holding L. P., 949 F.2d 42, 47 (2"" Cir. 1991)
`(when a party relies on an exhibit in its pleading but does not submit a copy to the court, the other party
`may treat the exhibit as being part ofthe pleadings) (relying on Fed. R. Civ. P. 10).
`
`the Murray Dec]. and the Second Lehner Decl. are being
`2 Because they include physical exhibits,
`submitted in paper format. To maintain the electronic record, however, Mattel is also submitting copies of
`(continued)
`
`

`
`6. Mattel’s position is that because Registrant was only using the designation as the title
`
`for a single creative work (albeit offered in two formats), the use-based application was
`
`not supported at the time of filing and was thus void ab initio. See Pet. Br., pp. 1, 9-10;
`
`accord, e.g., Beech Aircraft Corp. v. Lightning Aircraft Co.,
`
`1 USPQ2d 1290, 1296
`
`(TTAB 1986). Registrant counters that its use of LAUGH & LEARN & Design on the
`
`VHS tape and the DVD should suffice for all ofthe goods.3 See Reg. Br., pp. 6-1 1.
`Registrant’s interpretation of the law, however,
`is simply wrong. Although
`
`Registrant may have sold its “Laugh & Learn” video program in two different formats
`
`and displayed the “Laugh & Learn” title on the video jackets and in the manner shown in
`
`the subject application, such activities do not establish proper use as a trademark for the
`
`goods in question. As will be discussed, (1) Registrant’s use of the LAUGH & LEARN
`
`& Design designation to denote the program title would not have been perceived by
`
`consumers as a trademark use; (2) selling the same video program in two different
`
`formats does not qualify as a “series,” even if one of the formats includes added “bonus
`
`features”; and (3) offering a single video tape and a single digital video disc (even ifthey
`
`contain separate and distinct creative works, unlike the situation presented here; see
`
`infra) does not support an application to register a mark for a “series of prerecorded
`
`videotapes, audio cassettes, digital video disc_s_ and compact discs,” as was recited in the
`
`subject application (and as reflected in U.S. Reg. No. 3214699). Registrant has thus
`
`failed to rebut
`
`the showing made by Mattel
`
`that
`
`the subject application must be
`
`considered void ab initio and the resulting registration therefore subject to cancellation.
`
`the declarations using the ESTTA system, substituting slip sheets for the physical exhibits.
`
`3 Registrant does not dispute that if it was not using LAUGH & LEARN & Design as a mark for the goods
`(continued)
`-
`
`

`
`A.
`
`Registrant Was Not Using LAUGH & LEARN & Design as a Trademark
`
`To qualify for registration, the designation a party seeks to register as a mark must
`
`first be used in commerce as a trademark—that is, “to identify and distinguish [a party’s]
`
`goods
`
`from those manufactured or sold by others and to indicate the source of the
`
`goods, even if that source is unknown.” 15 USC § 1127; see also, e.g., TMEP, § 1202.
`
`The mere fact aparty has applied to register the designation as a mark does not establish
`
`trademark use. In re Cooper, 117 USPQ 396, 398 (CCPA 1958) (“that is what we have
`
`to decide”).
`
`Instead, one must consider the way the party has actually used an alleged
`
`mark by reviewing the specimen(s) of record. See id. at 397, 400; TMEP, § 904.07(b).
`
`In the present case, Registrant claims it -was using the LAUGH & LEARN &
`
`Design designation as a trademark for both a videocassette and a digital video disc as of
`
`the filing date of its application. See Reg. Br., p. 6 (citing Fedoruk Aff, 111] 8-10, 16-18).
`
`However, that is not correct. As evidenced by the only two examples of “use” in the
`
`record, Registrant was not using LAUGH & LEARN & Design as a trademark on any
`
`goods when it filed its application.4 Rather, Registrant was merely using LAUGH &
`
`LEARN & Design as the title of its “Laugh & Learn” video program, which is the
`
`antithesis of use as a mark. Accord Pet. Br., p. 10 (noting that the only use Registrant
`
`was making of LAUGH & LEARN & Design as of the application date was “as the title
`
`for a single creative work—namely, the video program entitled ‘Laugh & Learn’”).
`
`at issue as ofthe filing date of its application, the resulting registration should, in fact, be cancelled.
`
`4 Once again, it bears noting that the mark for which registration was sought (and obtained) is LAUGH &
`LEARN & Design, and Registrant has not suggested that it used that composite designation other than on
`the product as sold. Thus, testimony that Registrant may have used the words “LAUGH & LEARN" in
`marketing to wholesalers (even ifthat testimony is credited) is irrelevant. Cf Fedoruk Aff, 111] 8-10, 16-18,
`Exhibits B, G, H (referring to use of “LAUGH & LEARN” in “marketing materials,” “purchase orders,”
`and “invoices,” but none of which document show use ofthe design); see also Pet. Br., pp. 6-7, 1 1.
`
`

`
`This lack of trademark use can be seen by comparing Registrant’s only specimens
`
`of use (shown below right) with Registrant’s use of other video titles (below left), such as
`
`ANIMALS, ABCs, 123s, FRENCH, and SPANISH. After all, if“LAUGH & LEARN”
`
`was somehow being used by Registrant as a trademark, then evidently afl of these other
`
`titles (“ABCs,” “I235,” etc.) were also being used as “marks,” including titles (e.g.,
`
`“Right Brain,” “Lefi Brain”) Registrant now contends were part of its “Laugh & Learn
`
`Collection.” Cf Fedoruk Afl, 1] 11. The truth, however, is that the way Registrant used
`
`the LAUGH & LEARN & Design designation on its video program at the time it filed the
`
`subject application would have been seen by consumers to be a use of the phrase “Laugh
`
`& Learn” as the title of the video program. The trademark indicating the source of the
`
`video program would have been understood (as intended) to be “BRAINY BABY”:
`
`
`
`Original Eight Video Titles
`Sold by Registrant
`
`New “Laugh & Learn” Video
`(in VHS and DVD format)
`
`Cf First Declaration of William Lehner (“First Lehner Decl. ”), Attachment A, p. 19
`
`(submitted with Pet. Br.) with Deposition of The Brainy Baby Co. LLC Pursuant to Rule
`
`30(1)) (6) (“Brainy Baby Dep.”), Exhibits 2-2A, 3-3A (submitted with Pet. VBr.).
`
`

`
`The above two examples (namely, Brainy Baby Dep., Exhibits 2-2A, 3-3A) are
`
`the only examples of how Registrant was using the LAUGH & LEARN & Design
`
`designation on a video tape or digital video disc. Accord Fedoruk Afl, 111] 8-18; Reg. Br.,
`
`pp. 7, 8; see also n.3, supra.5 Moreover, Registrant has admitted that the title of the
`
`video program shown in these examples was,
`
`in fact, “Laugh & Learn.” See Fedoruk
`
`Ajf, 1] 12; see also Pet. Br., pp. 2-6 (citing evidence). Thus, Registrant failed to use the
`
`LAUGH & LEARN & Design designation as a mark on any individual good. Cf 15 USC
`
`§§ 1051, 1052, 1127. The only question therefore is whether Registrant’s use of the
`
`designation as the video title for both the VHS and DVD versions of its “Laugh & Learn”
`
`program could be considered as functioning as a mark for a “series” of goods. Accord
`
`Reg. Br., p. 6. As will be discussed, however, offering the same program under the same
`
`title in two different video formats does not qualify as use for a “series.” Indeed, if it did,
`
`then the entire doctrine underlying “single creative works” would have to be discarded.
`
`B.
`
`Offering the Same “Laugh & Learn” Video Program in Two Different
`Formats (VHS and DVD) Does Not Amount to Use of the LAUGH &
`LEARN & Design Mark for a “Series” of_Creative Works
`
`It is well settled that the use of a designation as the title of a single creative work
`
`is insufficient as a matter of law to establish trademark rights. See TMEP, § 1202.08
`
`(citing authority); see also, e.g., Herbko International Inc. v. Kappa Books Inc., 64
`
`In his affidavit, Mr. Fedoruk attaches two computer screen shots, which he claims show what a consumer
`5
`would see when he or she accesses certain bonus features contained on the DVD. See Fedoruk Aff, 1|
`l3(c), Exhibits C, D. This evidence, however, is irrelevant to the question of “use." To being with, the
`“Laugh & Learn” design shown in these screen shots is not the mark referenced in the drawing. Compare
`id., Exhibits C, D with Amended Drawing (Serial No. 78453907) (showing the words “LAUGH &
`LEARN” in a Q “wave” [or “banner”]). More fundamentally, however, the menu screen (Fedoruk,
`Exhibit D), which is only visible afier the DVD is inserted into a reader, merely (and not unexpectedly)
`references the video’s title and would not been seen as a source-identifying use. Meanwhile, the non-
`interactive screen inviting users to “check out” the Brainy Baby website (Fedoruk, Exhibit E) is no more
`than a electronic “package insert,” and thus does not qualify as use as a mark. Cf TMEP, § 904.04(c).
`
`-
`
`

`
`USPQ2d 1375, 1379-80 (Fed. Cir. 2002); In re Author Services, 2003 WL 21979843
`
`(TTAB 2003). The title of a creative work is the descriptive name of the work itself and
`
`cannot be appropriated as any party’s exclusive property. Cooper, 1 17 USPQ at 400.
`
`On the other hand, if a designation is used for a series of creative works (e.g.,
`
`THE MAGIC SCHOOL BUS, STAR WARS), it is deemed registrable on the theory that
`
`the public would not view it as identifying any one work, but rather as denoting the
`
`source of a number of distinct creative works, all of which, though, bear the same mark:
`
`is still being published, has a
`least while it
`The name for a series, at
`trademark function in indicating that each [work] of the series comes from
`the same source as the others. The name of the series is not descriptive of
`any one [work] and each [work] has its individual name or title. A series
`name is comparable to the title of a periodical publication such as a
`magazine or newspaper. While it may be indicative either specifically or
`by association in the public mind, of the general nature of the contents of
`the publication,
`it
`is not the name or title of anything contained in it. A
`book title, on the other hand especially one which is coined or arbitrary,
`identifies a specific literary work, of whatever kind it may be, and is not
`associated in the public mind with the publisher, printer or bookseller--the
`“manufacturer or merchant” referred to in the Trademark Act..
`
`Id.; see also Author Services, 2003 WL 21979843 at *4 (“The same is likewise true with
`
`respect to the titles of plays and movies ..., and would also be true, by analogy to books,
`
`with respect to the titles of pre-recorded audio tapes, video tapes and compact discus ...”)
`
`(citing In re Posthuma, 45 USPQ2d 2011, 2013-14 (TTAB 1998)); TMEP, § 1202.08.
`
`The burden is on an applicant to demonstrate that it has used its alleged mark for a
`
`“series.” TMEP, § l202.08(c). To that end, Examining Attorneys are instructed that
`
`during prosecution, “[a]n applicant must submit evidence that the title is used on a_t_l£as_t
`
`two different creative works.” Id. (emphasis added).
`
`It is undisputed here, however, that
`
`Registrant only submitted a single specimen.. See Specimen (Serial No. 78453907).
`
`

`
`Nonetheless, Registrant argues that because its “Laugh & Learn” video program
`
`was available in both the VHS and DVD formats at the time the subject application was
`
`filed, the LAUGH & LEARN & Design designation was supposedly being used on “two
`
`distinct creative works.” See Reg. Br., 8. A “series,” however, “is not established when
`
`only the format ofthe work is changed.” TMEP, § l202.08(c). Thus, for example, using
`
`the same title on both the printed and the recorded version of a book does not establish
`
`use of the title for a series, nor is a series established by using the title on multiple
`
`versions of the same work (such as abridged and unabridged versions) or by using it on
`
`collateral goods, such as posters or the like. See id.; see also Author Services, 2003 WL
`
`21979843 at *2, *5 (refusing registration for BATTLEFIELD EARTH even though
`
`applicant submitted evidence that the name was being used on multiple editions of the
`
`“Battlefield Earth” book; on a video tape and a digital video disc featuring a movie of the
`
`same name that was based on the book; and on a CD featuring music from the movie).
`
`Unfazed, Registrant suggests that its use of LAUGH & LEARN & Design on a
`
`VHS tape and a DVD of the same work nonetheless amounts to use with a “series”
`
`because the content of the DVD is supposedly “significantly different from that of the
`
`VHS” and, “more importantly,” because the content of the DVD allegedly “changes with
`
`each presentation,” thus making it more akin to a computer program. See Reg. Br., p. 8;
`
`cf TMEP, § 1202.08(b). Registrant, however, is taking great liberties with the facts.
`
`1.
`
`Registrant Has Only Used the LAUGH & LEARN &
`Design Designation on a Single Creative Work
`
`It is true that if an applicant originally produces a creative work and then later
`
`offers a second or subsequent edition in which “the content changes significantly,” the
`
`two editions will be considered to be distinct works. See TMEP, § 1202.08(b) (emphasis
`
`

`
`in original). As the Board can see for itself, however, there is no difference between the
`
`45-minute “Laugh & Learn” program contained on the VHS tape and the same 45-minute
`
`“Laugh & Learn” program found on the DVD. Compare Murray Decl., Exhibit A with
`
`id., Exhibit B; compare also Second Lehner Decl., Exhibit A with id., Exhibit B; see also
`
`Murray Decl., 111] 2, 8, Exhibit C (split screen comparison of the primary video programs
`
`found on the “Laugh & Learn” VHS tape and DVD disc); Declaration of Frank Chang
`
`(“Chang Decl.”), 111] 2-4; First Lehner Decl., 1111 9-10; Second Lehner Decl., fil 2. This
`
`conclusion is also supported by Registrant’s catalogs from the relevant time,
`
`in which
`
`Regist'.'ant generically described the contents of its 45-minute “Laugh & Learn” video
`
`program, and then, below that description, listed the VHS and DVD products as simply
`
`being the two different formats in which the program was available for purchase:
`
`Vaugh Lea”
`
`% Laugh 8: Learn“
`
`The fire-'9 few years of life are critical
`periods for brain development
`and
`this video is 2 wonderful tool so
`stimulate learning in bablsa and
`mddma! .{a,u.m W-Wye will laiigh at
`my 53“: “things thaz ad-’ mawmng
`games-, music, and much more. while;
`
`learning critical ekilrs like problem
`solving. listening skills, classifying skilla,
`and concept awareness.
`
`- Stimulates learning through "Things that Go".
`Matching Games, Music, Silly Faces, and more,
`
`- Children learn critical skills like Problem
`Solving, Listening Skills, Classilylng Skills, and
`Concept Awareness.
`' 45 minutes
`
`, F0, ages -,_3 Years
`
` VHS.#101_13
`
`DVD #20119
`
`—
`
`ax? $15.95
`size $19.95
`
`.,
`
`.
`
`..
`
`-« .1
`
`.
`
`~;.—
`
`Registrant’s 2004 Catalog
`
`Registrant’s 2007 Catalog
`
`Brain)" Baby Dep., Exs. 16, 17; see also, e.g., id., Exs. 7, 8 (sales records confirm that the
`
`“Laugh & Learn” VHS tape and DVD were first sold to the public on the same day).
`
`The packages for the “Laugh & Learn” VHS tape and DVD likewise do not
`
`suggest that the content of the “Laugh & Learn” program differs based on the format.
`
`In
`
`

`
`fact, for all intents and purposes, the front covers of the two products are the same, with
`
`the lone noticeable exception being that the DVD cover includes a “DVD” notation:
`
`
`
`VHS (2004)
`
`DVD (2004)
`
`Compare Brainy Baby Dep., Exhibits 2-2A (Vl-IS) with Exhibits 3-3A (DVD); cf TMEP,
`
`§ l202.08(b) (noting that statements on book or video jacket covers [such as “new and
`revised”] ofien indicate that the later work reflects significant revisions to the original).
`
`Rather, the only “difference” between the two items is that the DVD, as is typical
`
`for videos presented in that format, includes certain “bonus” features not found on the
`
`VHS tape. Compare Brainy Baby Dep., Exhibit 3A (listing the “Special Features”
`
`included on the DVD “[i]n addition to 45 minutes of video”) with id., Exhibit 2A (not
`
`identifying any such additional features); accord Murray Decl.,
`
`1] 2; Second Lehner
`
`Decl., 1] 3; see also 321 Studios v. Metro Goldwyn Mayer Studios Inc., 70 USPQ2d 1028,
`
`1032 (ND. Cal. 2004) (explaining that the DVD format “allows bonus features, such as
`
`alternate endings, deleted scenes, video games, alternate viewing configurations,
`
`L.
`commentary from directors and actors, and other menu-driven options,
`
`that are not
`
`10
`
`

`
`available on VHS tapes or any other format”).
`
`Specifically,
`
`the DVD contains the
`
`following features in addition to the primary 45-minute video program:
`
`Scene Selection. A menu feature that allows the view to start the
`primary video program at different points in the program. (Second
`Lehner Decl., 1]1] 10-20, Exhibits C(3)-(13); Murray Decl., 1]1] 5-6).
`
`“Baby Bloopers”. A short video clip (less than two minutes) of
`funny outtakes from the making of the primary video program.
`(Second Lehner Decl., 1] 36, Exhibit C(29) Murray Decl. , 1] 7).
`
`A short advertisement (less than one minute)
`“Sneak Peaks”.
`listing other video programs sold by Registrant.
`(Second Lehner
`Decl., 1] 37, Exhibit C(30) Murray Decl., 1] 7).
`
`“Behind the Scenes”. A documentary-style segment (about seven
`minutes in length) that shows how the video program was made.
`(Second Lehner Decl. , 1] 38, Exhibit C(31) Murray Decl., 1] 7).
`
`“Baby Face Storybook”. A short illustrated story (less than two
`minutes long), with pictures and text displayed on screen. (Second
`Lehner Decl., 1]1] 22-33, Exhibits C(15)-(26) Murray Decl., 1] 7).
`
`“Contact Us”. A page with contact information for Registrant.
`(Second Lehner Decl., 1] 39, Exhibit C(32) Murray Decl., 1] 7).
`
`“DVD—ROM Activities”. A single page that instructs viewers to
`ut the DVD into a com uter and to 0 en the file “index.html.”
`P
`P
`P
`
`That file, however, merely advises viewers to visit Registrant’s
`website, where additional activities can be found.
`(Second Lehner
`Decl., 1]1] 34-35, Exhibits C(27)-(28); Murray Decl., 1] 7).
`
`See also generally Murray Decl., Exhibit B; Second Lehner Decl., Exhibit B.
`
`The content of Registrant’s creative work——i.e.,
`
`the “Laugh & Learn” video
`
`program-, however,
`
`is not changed (let alone “change[d] significantly”; see TMEP, §
`
`l202.08(b) (emphasis in original)) by any of these additional “features.”
`
`Indeed,
`
`comparing the VHS tape to the DVD (or vice versa), one readily sees that nothing has
`
`been “changed”—the same 45-minute program found on the VHS tape is found on the
`
`DVD in its entirety; it is just that the DVD contains some additional material not found in
`
`ll
`
`

`
`the other format. See, e.g., Murray Decl., 111] 2, 8, Exhibit C (split screen comparison);
`
`Chang Decl., W 2-4; Second Lehner Decl., 1] 2. This is no different, however, than how
`
`publishers, when releasing popular hard cover books in paperback, often will add
`
`material, such as a “Forward” by a reviewer, to the front of the book, or include an
`
`appendix at the. end that contains an excerpt from the author’s latest novel. There, as
`
`here, the author’s creative literary work has not been changed; it is just that the format
`
`has changed, and as part of that format change certain ancillary material has been added.
`
`It is therefore disingenuous to contend that a VHS tape and a DVD of the same
`
`program comprises a “series” just because the latter has “bonus features” not included
`
`with the former. Cf Reg. Br., p. 8. Indeed, were that the law, Mattel respectfully submits
`
`that the “Single Creative Work” doctrine itself would have to be discarded because when
`
`a work is released in different formats, additional material unique to that format is almost
`
`invariably included. The key question instead is whether the content of the creative work
`
`has been changed from one version to the next, such that a consumer would recognize the
`
`two versions as comprising a series of different works that are tied together by the same
`source-identifying mark. That is not the case here. Like hundreds of other movie and
`
`video studios, Registrant simply came to market with both a VHS and a DVD version of
`
`the same program on the same day. Registrant has therefore failed to establish that it
`
`used the LAUGH & LEARN & Design designation with more than one creative work.
`
`2.
`
`The Content of the “Laugh & Learn” DVD is Not
`“Interactive,” Nor Does it “Change” With Each Viewing
`
`Registrant’s alternate contention—namely,
`
`that
`
`the “Laugh & Learn” DVD
`
`contains “interactive” features and is akin to a ‘fcomputer program” that “yield[s]
`
`different experiences as the parent chooses which functions and content they want for
`
`12
`
`

`
`their c,hild[ren]”; see Reg. Br., pp. 3, 8, 9—is pure hyperbole. Once again, though, the
`
`Board is invited to examine the actual DVD exhibit, which has been submitted both in its
`
`original form and as a computer-readable media, see Murray Decl., Exhibit B; Second
`
`Lehner Decl., Exhibit B; see also Second Lehner Decl.,
`
`1111 6-39, Exhibits C(1)-(32)
`
`(describing each feature of the DVD disc and including screenshots), and judge
`
`Registrant’s statements for itself. Moreover, contrary to Registrant’s suggestion (Reg.
`
`Br., pp. 9-10), there again can be no “genuine issues of fact” as to the contents of the
`
`“Laugh & Learn” DVD (or VHS) because the same physical exhibit(s) Mr. Fedoruk
`
`purports to describe are in evidence. See Harris, 201 F.3d at 803 n.1; O'Connor, 308
`
`F.2d at 914, 915 (there can be no issue or fact where “the
`
`records so overwhelmingly
`
`outweigh the oral testimony offered in behalf of the [non—movant]”) (citing cases); see
`also, e.g., Wood v. U.S., 342 F.2d 708, 713-14 (8"‘ Cir. 1965) (“No jury can be allowed to
`
`return a verdict based upon oral testimony which is flatly opposed to physical facts, the
`
`existence of which is incontrovertibly established.”) (quoting authority).6
`
`Turning then first to Registrant’s claim that its DVD “provides for interactivity,”
`
`see Reg. Br., pp. 3, 8; Fedoruk Afl, 1] l3(a), little response is even needed. Note that
`
`Registrant does not claim that the “Laugh & Learn” DVD contains interactive features,
`
`just that the static features it does have (e.g., the “Baby Face storybook”) allows for a
`
`parent