Friday, January 29, 2010

Use Your Book Title to Generate Passive Income

A great title can contribute tremendously to a book’s success and an author's personal brand. It can also create opportunities for multiple passive income streams from licensing. However, suppose your title is likely to cause confusion with a previously registered or unregistered trademark. In that case, your book can be blocked or taken down by filing a simple online complaint, or worse still, you can be sued for trademark infringement.     

Trademark Law in a Nutshell

Trademark law in plain and simple language is a form of consumer protection. Confusion is the linchpin in any trademark claim. Likelihood of confusion, a term that eludes easy definition, is the test for trademark infringement.  Even where a trademark has not been registered, it’s a violation of unfair competition law – and commercial morality -- to misrepresent the source or approval of a creative work.   

Amazon Brand Registry

Trademark registration of a book title is necessary if you wish to participate in Amazon's Brand Registry. The registry allows trademark owners to search Amazon's platform using keywords for instances of confusingly similar titles and proactively (without resort to litigation) remove allegedly infringing content.   
While Amazon requires a federal registration to participate in their Brand Registry, trademark rights arise from the actual use of a mark in the US, not registration. The first to use a mark in commerce has priority over junior uses.  Among the benefits afforded by a trademark are:   
  • Block another company from registering your name for its business or products
  • Trademark will appear in the Trademark Office's 24/7 free online database of registered marks and pending applications 
  • Evidence of ownership of the trademark
  • Value creation - trademarks account for a substantial percentage of a company's overall value in mergers and acquisitions
  • Registration can be used as a basis for obtaining registration in foreign countries
  • Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods
Tip:  Keep in mind that both identical and confusingly similar marks for related goods and services may be entitled to trademark protection and that a trademark owner need not register their mark federally to enjoy trademark protection.
Title Clearance Searches

Since trademark rights are granted to those who first use the mark commercially, it’s important to determine if anyone is using your title as a trademark for related goods or services. This is accomplished by doing a title clearance search (discussed later).

How Do You Know if You Can Use a Title Someone is Already Using? 

The test for trademark infringement is deceptively simple. What is the likelihood a “reasonably prudent consumer will be misled about the true origins of a seller’s product or service?” Likelihood of confusion is synonymous with a probability of confusion. It’s a factor analysis.  Similarities in sight, sound and meaning, and the goods' relatedness are the key vectors in the trademark infringement analysis. Add to the mix the strength of the mark (discussed later), the cost of the goods, and several other factors, and you have the secret sauce of infringement analysis.  

In addition to luring potential purchasers away from a competitor’s product by using a confusingly similar mark, Congress prohibits using a recognizable logo, design, name, or likeness to falsely suggest a connection or commercial endorsement – even in the absence of competition. 

When evaluating Trademark Office or internet search results, the three key considerations are:
  • Has the mark been registered?
  • How similar are the marks?
  • Are the goods or services you identified related to the subject matter of your book?

Not Every Use of a Trademark (or Similar Title) Without Permission is an Infringement 

There are many legitimate reasons to use a particular word or phrase in the title of a creative work that doesn’t have anything to do with trading on another party's goodwill, fame, or reputation.  For example, words that merely describe the contents of a work receive no protection without proof that consumers associate it with a particular source.  While single titles are not entitled to trademark registration if a single title attains secondary meaning (discussed later), it can be protected. Generic names (100 Best Science Fiction Movies) standing alone are not entitled to trademark protection.­­­­

What to search for?

When doing a title clearance search, the central question is whether the public will believe your work was published or otherwise approved by someone else. 

Look for similar marks, including spelling variations, used not just for competitive works but also for similar goods and services.  Searching for identical (or near-identical) marks is not enough. If you find a similar mark in appearance, sound, or meaning and is used for related goods or services, you will want to consider another title. In deciding if two marks are confusingly similar, extra weight should be given to the dominant element of the mark.

Changes (especially if minor) such as the addition of a word, reversal of terms, phonetic equivalents, and misspellings will not necessarily help you avoid a likelihood of confusion. Search descriptive terms! While initially, they don’t qualify for trademark protection, over time, through actual use, promotion and publicity, and marketplace success, a descriptive term can qualify as a trademark (J.K. Lasser’s YOUR INCOME TAX). While a title clearance search is similar to a trademark availability search, courts treat titles of creative works differently than trademarks used for other goods and services.  Titles of creative works implicate First Amendment free speech values.  In analyzing titles of creative works, courts use a different – more liberal – “artistic relevance” standard than for trademarks in general.        

A Warning Before You Start Your Search

Because of the malleability of trademark and unfair competition law, evaluating a title or trademark search report is as much an art as it is science. In close call situations, it comes down to how much risk you are willing to take on, which is a business decision informed by the quality of the search and the legal analysis. When in doubt, consult a trademark attorney.  If consulted early on, your trademark attorney can advise you if your mark is registerable, and if it is, improve your odds of obtaining a trademark registration.

Where to Start Your Search

Step 1. Trademark Office Database. The USPTO’s free online database of every federal trademark that’s been registered or applied for is available 24/7. Known as TESS (Trademark Electronic Search System), the database is located at In using TESS, keep in mind that the database does not reflect the real world. It does not include unregistered marks.

Click on “Basic Word Search Mark,” and it will take you to the search page.

Before running a basic word search, check the “live” option found near the top left. Enclose phrases in quotation marks to determine if there are any dead-on or exact matches, keeping in mind that similar marks, and phonetic equivalents, pose a risk. For that reason, search spelling variations (e.g., both Quik and Quick). While only a live registration can be used to block a newly filed application, a “dead” registration does not necessarily mean the mark is no longer being used commercially. That’s why it is important to also do an internet search.

Caution! It is a common misconception all you need to do is search the Trademark Office’s database for conflicting marks. Not so. You must also be concerned about common law or unregistered marks. Use the TESS database to screen out obvious conflicts. If no relevant results are returned, search the internet to determine if another similar trademark is being used for related goods or services.

If you are flooded with results (it is not unusual to get hundreds of hits for a descriptive term), run a "Word and/or Design Mark Search (Structured)” instead. You can construct a keyword search using the Trademark Office’s drop-down lists with this option. For example, if your search term is TASTY for a new cookbook series, put the term in the first search box and select the “non-punctuated word mark” field. Make sure to search for phonetic equivalents and cutesy spellings (TASTEE). Refine your search by combining keywords with AND, NOT, OR, or NEAR operators. For example, in the second search box put the word BOOK and select the “goods and services” field from the drop-down menu. The search returns 23 hits, including TASTY TITLE for a series of fiction works, namely novels and books, TASTY TIME for book publishing, namely publishing of customized cookbooks.

Remember, the goal is to identify similar trademarks for related goods or services. So, instead of using the “good and services” field, select “international class” from the drop-down list. Trademarks are categorized according to forty-five internationally recognized numbered classes of goods and services. Each class stands for a basket of related goods or services. Using the “international class” field, you can check for closely related goods and services. For example, in conducting an initial search for a new children’s book series, the relevant goods would be classes 16 (for printed materials), 09 (for apps, ebooks, and audiobooks), and 41 (for entertainment related services, which includes workshops, seminars, as well as episodic television). Suppose you discover Rabid Readers for “computer software for children used in developing reading and vocabulary skills” while screening for conflicts with Rabbit Readers for a “series of educational activity books and ebooks for children,” because of the similarity in sight, sound, the relatedness of goods and how apps and ebooks are sold. In that case, you must evaluate the likelihood of confusion between the two. TESS results are not a picture of the real world, just a reflection of what the database contains – marks people and companies sought to register.

The USPTO website has step-by-step instructions for searching using the word and/or design mark search (structured) option, with pro tips on how to expand and filter your result.

Trademark Protection of Series Titles

Generally, titles of works that are part of an ongoing series are protected under trademark and unfair competition law. Once a series title such as Chicken Soup for the Soul becomes identified in the public's mind with a particular author or publisher, unfair competition law kicks in to protect against consumer confusion, enforcing a kind of commercial morality on the marketplace of ideas. Once a series has been established, each work in the series reinforces that it comes from the same source as the others. 
Practice Pointer!  Descriptive trademarks are not given automatic trademark status, although marketing people tend to prefer descriptive titles for obvious reasons. Over time, descriptive titles must develop secondary meaning to enjoy protection. Secondary meaning is the connection in a consumer's mind between a mark and the provider of those services.
Are Single Titles Entitled to Trademark Protection? 

Unlike series titles, a title of a single creative work cannot be registered as a trademark.  This is one of the quirks of trademark law. To quote the USPTO, “Regardless of the actual relation of the title to the book,” courts treat all single title works as "inherently descriptive" at best and "inherently generic" at worst – unless the single title has had “wide promotion and great success.”
CASE & COMMENT: When McGraw-Hill, publishers of the bestselling PT-109: JOHN KENNEDY IN WORLD WAR II, moved to enjoin Random House from using the title JOHN F. KENNEDY & PT-109 on a competing book, the court found that two terms in plaintiff's title -- "PT-109" and "John F. Kennedy" -- were descriptive or generic terms, and therefore unprotectable. Noting the inherent weakness of the plaintiff's title, the court commented that the words chosen by Random House were an apt description of its book and, therefore in the public domain. Rejecting the plaintiff's unfair competition claim, the court further noted that because of the weakness of the plaintiff's title, combined with the differences in the overall look and feel of the two books (including Random House's prominent use of its distinctive logo on the spine and back jacket) there was no likelihood of confusion. McGraw-Hill Book Company v. Random House, Inc., 32 Misc. 2nd 704, 225 N.Y.S.2d 646, 132 U.S.P.Q. 530 (1962).  
Parody Titles

For as long as anyone can remember, parody has been an acceptable form of social criticism. However, sometimes poking fun can be no laughing matter, at least as some courts are concerned.

The problem with parodies, in general, is that there is no bright-line test to determine what constitutes a permissible parody, which drives home the point that trademark law is complex. Humor is not an ironclad legal defense to either copyright or trademark infringement -- or, for that matter, libel. For instance, while a florist's use of the slogan THIS BUD'S FOR YOU in an ad for fresh flowers was held by one court not to infringe the plaintiff's well-known beer slogan (Anheuser-Busch v. Florists Assn. of Greater Cleveland, 603 F. Supp. 35 (ND Oh 1984)), the use of the phrase WHERE THERE'S LIFE . . . THERE'S BUGS for a combination floor wax/insecticide, was determined by another court to infringe the very same trademark. Chemical Corp. of America v. Anheuser-Busch, 306 F2d 433 (5th Cir. 1962).

Although commercial identity confusion is the most common form of trademark infringement, a noncompetitive mark can also violate a famous owner’s trademark by diluting the distinctiveness of the owner’s trademark. Thus, Barbie’s Playhouse for the title of a pornographic website, was held to tarnish Mattel’s Barbie for toy dolls. Mattel Inc. v. Jcom Inc., WL 766711 (S.D. N.Y. 1998). Just to confuse matters, in Lucasfilm Ltd. v. Media Market Group, Ltd., 182 F. Supp. 2d 897 (N.D. Cal. 2002), the court held that a pornographic movie entitled STARBALLZ was a permissible parody of Star Wars and not barred under the Federal Trademark Dilution Act.

Fortunately for literary authors, the courts have placed some First Amendment limits on the rights of trademark owners. For example, in General Mills, Inc. v. Henry Regnery Co. (421 F.Supp. 359 (N.D.IL. 1976)), the owners of the "Betty Crocker" trademark sued a well-known comedian over a spoof entitled MOREY AMSTERDAM'S BETTY COOKER CROCK BOOK FOR DRUNKS. The book, which featured the "Betty Crocker" trademark on its cover, also had a photo of comedian Morey Amsterdam pouring alcohol over a salad. Since the test of trademark infringement is likelihood of confusion, the case turned on whether the public would believe that plaintiff, rather than the defendant, was the source of the defendant's book. While noting that both plaintiff and defendant published books (a fact tending to support a finding of likelihood of confusion), the court held there was no confusing similarity because the comedian's name appeared prominently in the title, and his photo on the cover, serving as a prominent disclaimer. The takeaway from this case is that the clear, bold, and prominent use of your own title (or, in this case, name, and likeness) can diminish the likelihood of confusion to acceptable levels.

Similarly, in Cliff Notes, Inc. v. Bantam, Doubleday, Dell Publishing (866 F2d 490 (2nd Cir. 1989)), a U.S. Court of Appeals rejected an argument that a "Spy Notes'" parody of "Cliff Notes" study aids was confusingly similar to "Cliff Notes''" the well-known study aids. Aside from adopting a cover, title, and format similar to the "Cliff Notes" format, "Spy Notes" lampooned several contemporary titles and authors in "Cliff Notes" form. The court classified the parody as "artistic expression" worthy of constitutional protection despite the defendant's profit motive.

Margaret Domin, in a law review article, perhaps, said it best, “A non-infringing parody is merely amusing, not confusing. A “true” parody will be so obvious that a clear distinction is preserved between the source of the target and the source of the parody.”

Use of Famous Names in Titles

Unauthorized Biographies: The First Amendment is the patron saint and protector of unauthorized biographies. Consequently, a well-known person cannot stop the use of their name in the title of an unauthorized biographical work solely on trademark precepts. The protection of the right of free expression is so important that even where a right of publicity is recognized (the right to commercial uses of one's name and image), the public's right to know what prominent people have done or what has happened to them is generally indulged.

However, authors do not have the unbound freedom to use a famous person's name or likeness in a title for commercial purposes. For instance, while an unauthorized bio of the late film star Keith Ledger entitled "Keith Ledger:  The Unauthorized Biography" is permissible, you can't publish a "Keith Ledger Cookbook" without the permission of the late star's estate. The general rule is that as long as the use of the celebrity's name is literary or expressive (i.e., primarily editorial) and not a disguised advertisement for the sale of goods or services (e.g., cookbooks), permission is not required.
Caution! While the use of a celebrity’s name in the title of an unauthorized biography is generally not considered a violation of that individual’s right of publicity or trademark rights, authors need to be aware that in the U.S. (and elsewhere) false statements of facts, the result of shoddy journalism, can give rise to false light and libel claims.
"Artistically" Relevant Use of Celebrity Names: Provided a celebrity's name has some reasonable "artistic" relationship to the content of the work and is neither "explicitly" misleading nor a thinly veiled commercial advertisement, the slight risk that the celebrity's name might implicitly suggest endorsement or sponsorship, may be outweighed by the public interest in free expression. For instance, the song "Bette Davis Eyes" and the film "Garbo Talks" are good examples of protected uses of well-known individual's names used in an "artistic" manner.

CASE & COMMENT. Italian director and screenwriter Federico Fellini's 1986 satire, GINGER AND FRED, concerned two retired small-time dancers known as "Ginger and Fred" because they used to imitate the well-known dance duo of Rogers and Astaire. When Ginger Rogers learned of the film, she claimed her right of publicity had been violated and that the movie falsely implied she endorsed the film -- a violation of Section 43(a) of the Trademark Act. Affirming the trial court, the Second Circuit Court appeals held that where the title of a film is related to the content of the film and is not a commercial advertisement for goods and services, the First Amendment's interest in freedom of expression will outweigh a well-known individual's right of publicity. The court further held that where a celebrity's name has at least some artistic relevance to the work and is not "explicitly" misleading, freedom of expression concerns will generally outweigh the likelihood of public confusion over the source of the work. Rogers v. Grimaldi, 875 F2d 994 (2d Cir. 1989). The Rogers case acknowledges that books and movies are hybrid by nature -- a combination of art and commerce. While consumers have a right not to be misled, the "expressive element" of a title may make it predominantly non-commercial and thus deserving of more protection.

Trademark Registration and the Single Book Title



  1. Lloyd, excellent summary of trademark law and book titles.

    There's always a lot of junk and 'interesting' analysis on the web. So if someone reading this is searching for the law of trademarks and how it applies to book titles, pay attention to this page.

    - Brian