Monday, December 13, 2021

How Do I Trademark a Book Title?

How Do I Trademark a Book Title Slide


A standalone book title cannot be registered as a trademark unless it is used for a series of works (e.g., Harry Potter #1, Harry Potter #2). 

The rationale for the single title rule is that once a book enters the public domain, it should remain there, and the public be allowed to identify it by its original title. So how do you protect a series title, even though you haven't published the second book in the series?   

The Single Title Trademark Dilemma Solved

The solution is to file an “Intent to Use” trademark application with the United States Patent and Trademark Office. By filing an Intent to Use application, you are staking out a claim to the title (explained below). 

While the first book in a series cannot be registered, the Trademark Office will allow you to file a trademark application on an Intent to Use basis. Assuming your application meets the minimum filing requirements when the second book in the series is published, and a Statement of Use is filed, the Trademark Office will re-evaluate the application. A key benefit of having a Intent to Use application is the filing date will serve as the date of first use if you complete the registration process.  Another benefit is your application will block other later filed trademark applications for identical (or confusingly similar) marks for related goods, including series titles.  

When you obtain the registration for your title, the original filing date will serve as the date of first use. That gives you priority over those who began using the trademark after your filing date.

A slightly different process is involved if you already use the mark for an established book series. In either instance, to obtain a federal registration, you will need to publish book two in the series.   
 
How To Protect a Single Book Title
 
While you can't register a single book title, you may be able to register the trademark used by the business behind the book. For example, if consumers would reasonably assume that the owner of a consulting business gave permission to publish a book, but they didn’t, that confusion may rise to the level of unfair competition. 
 
Comment. While conventional wisdom says you can't compare apples to oranges, they are both grown in orchards, are considered a fruit, and sold in the same section of your local supermarket, making them related for trademark law purposes.  Trademark infringement is not simply a book-to-book, blog-to-blog, or app-to-app comparison. 
 
Unfair competition law is commonly used as a cudgel to go after bad actors who try to deceive consumers into falsely believing their goods (including books, blogs, and businesses) have been approved or endorsed by others. 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.

In a case involving the Ralph Lauren Polo brand, a court permanently stopped the unauthorized use of the name Polo for a lifestyle magazine. In granting the injunction, the court rationalized that both the magazine and Ralph Lauren’s Polo brand were associated with fashion, elegance, and affluent lifestyles in the public's mind. While the First Amendment will allow you to write a book about Ralph Lauren and the fashion brand’s cultural significance, you cannot ride on Ralph Lauren’s designer coattails to boost your business by falsely implying an association when none exists.

Pro Tip. Suppose you are a business owner with a single book title associated in the public's mind with that business. In that case, that title may be protected if consumers were to see an unauthorized book with a confusingly similar title and reasonably believe it was associated with your business.  

Can I Use this Title?

When doing a title clearance or trademark search, the central question is whether the public will believe your book was published or otherwise approved by someone else. The Trademark Office's free online database of every federal trademark that’s been registered or applied for in the U.S. is an invaluable tool for identifying obvious conflicts – identical or similar marks for related goods or services. Known as TESS (Trademark Electronic Search System), the database is located at http://tmsearch.uspto.govIf the title you’ve selected is already registered by someone for related goods or services, absent a First Amendment defense, soldier on and choose another. If they cared enough to register their mark, there’s a good chance they are prepared to fight to protect it.  

CAUTION. Trademark Office search results are not a reflection of the real world. They do not include unregistered marks. A full search, including state trademark databases and internet sources, by a professional trademark search firm is recommended if registration is contemplated.

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. Most nonfiction book title simply describe the contents of the book. Words that merely describe the contents of a book are, at best, weak trademarks and receive no protection without proof that consumers associate it with a particular source.  By “source,” the Trademark Act refers to the source of the physical or virtual goods rather than the author. While single titles are not entitled to trademark registration, if a single title attains secondary meaning -- a level of commercial magnetism associated with runaway bestsellers -- it can be protected.  In analyzing whether a title infringes a trademark or another title, courts balance the right to speak freely against the rights of the trademark owner. While using a disclaimer (the subject of a future post) is not a magic bullet, a prominent disclaimer can help reduce the potential for consumer confusion.

For additional tips on selecting a book title, click here.

A Warning Before You Start Your Search

Trademark Registration of Book TitlesBecause of the malleability of trademark law, evaluating a search report is as much an art as it is science.  Put another way, the decision to move forward may come down to how much risk you are willing to take, which is a business decision informed by the quality of the search and the legal analysis. When in doubt, consult a trademark attorney. Your trademark attorney will advise if your mark is even registerable as a trademark.  Additionally, they will help you navigate the trademark registration maze.                                                                                                                                                                                                                    

How Do I Establish Ownership of a Title? 

Once you have selected your title,  you, or your attorney, can file either an Intent to Use trademark application or one based on actual commercial use online at www.uspto.gov.  Assuming your application meets the minimum filing requirements, it will be assigned to an examining attorney for review. If there are irregularities with the application, the examiner will issue an Office Action. An Office Action states the legal basis for a refusal to register. Some refusals are relatively easy to overcome, e.g., unacceptable specimens refusals and improper description of goods and services.

Substantive refusals include confusingly similar to a mark in an existing registration or pending application. Since a trademark must be distinctive, another common refusal is the mark merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of the goods or services covered in your application. Refusals to register are par for the course. Some can be overcome by cogent legal arguments. Those with fatal flaws cannot. If the objection is minor, the trademark examiner may call you or send you an informal email requesting information.  But, because trademark examiners cannot provide legal advice, the Trademark Office recommends that you use the services of a law firm that is familiar with Trademark Office practices. 

Keep Track of Trademark Office Deadlines

A trademark registration can last forever, provided timely renewal applications are filed, and the mark continues to be distinctive for the goods or services it is linked to. The following is a brief United States Patent & Trademark Office overview on how to maintain your trademark:

For a trademark registration to remain valid, an Affidavit of Use (Section 8 Affidavit) must be filed: (1) between the fifth- and the sixth year following registration, and (2) within the year before the end of every ten-year period after the date of registration. The registrant may file the Section 8 Affidavit within a grace period of six months after the end of the sixth or every tenth year, with payment of an additional fee. The registrant must also file a Section 9 renewal application (Section 9 Renewal) within the year before the end of each successive 10-year period following the date of registration, or within a grace period of six months after that, with payment of an additional fee. Assuming the Section 8 Affidavit and Section 9 Renewal are timely-filed as indicated above, the registration will be renewed for a 10-year term. If the Section 8 Affidavit and Section 9 Renewal are not timely filed, the registration will be canceled. Registrations canceled due to the failure to file a Section 8 Affidavit and Section 9 Renewal cannot be revived or reinstated.

Trademark Notices
 
Only with federal registration may you use the coveted ® symbol. If your mark is unregistered, you may use a superscript ™ after the mark. While trademark notices are not legal requirements, they have legal significance. Like a "No Trespassing" sign, a trademark notice gives notice of your rights. That makes it more difficult for a trademark infringer to assert a good faith defense. While willfulness is not a precondition to a profit award, willful infringers are treated more harshly than innocent ones, including, in exceptional cases, awarding attorneys’ fees.
 

Related Posts 

How to Choose a Book Title and Not Get Sued

Trademark Law and Book Titles

Common Copyright Permission Myths

 

 © 2022 Lloyd J. Jassin  COPYLAW is a service mark of Lloyd J. Jassin

DISCLAIMER: This article discusses general legal issues of interest and is not designed to give specific legal advice pertaining to specific circumstances.   It is essential that professional legal advice be obtained before acting upon any of the information contained in this article.


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