Monday, December 13, 2021

Trademark Registration and the Single Book Title

A single book title cannot be registered as a trademark, unless it is used for a series of creative works, which raises the question, how do I protect the first book in a series?  


The Single Title Rule

The catch-22 of book title protection is that a single book title cannot be registered as a a trademark unless it has been used on a series (e.g., the work is labeled "volume 1," "part 1," or "book 1"). 

So how do you protect a book title while you are waiting for book number two to be published in what you hope will be the next Hunger Games trilogy or What to Expect series? 

Problem Solved

The solution is to file an “Intent to Use” trademark application for that book title with the United States Patent and Trademark Office. By filing an Intent to Use application, you are planting a flag in the ground.

While the first book in a series cannot be registered (explained by later), the Trademark Office will allow you to file a trademark application on an Intent to Use. 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. The key benefit of filing on this basis is that an Intent to Use application will temporarily 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.

If you are already using the mark for an established book series, a slightly different process is involved. 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 can register the trademark used by the business behind the book. If consumers would reasonably assume that a business or blog owner gave permission to publish a book with a confusingly similar title, but they didn’t, that deception may rise to the level of unfair competition. 
 
Comment. While conventional wisdom says you can't compare apples to oranges, the fact they are both grown in orchards, are considered fruit, and sold in the same section of your local supermarket, make them related for purposes of trademark law.  To put it differently, 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 in the public’s mind with fashion, elegance, and affluent lifestyles. 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. If you are a business owner with a single book title associated in the public's mind with that business, 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.  

Why Can’t a Single Title Be Registered?
 
Unlike copyright which offers finite protection, a trademark can endure for as long as it is used.
The premise of the “single title rule” is that once a book enters the public domain, the book should stay in the public domain and the public have the right to call it by its name. 
 
Can I Use this Title?

The central question when doing a title clearance or trademark search 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 select another. If they cared enough to register their mark, there’s a good chance they are prepared to fight to protect it. 

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

Keep in mind that 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 the goodwill, fame, or reputation of another party. For example, words that merely describe the contents of a work 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. Generic titles (100 Best Science Fiction Movies) standing alone are not entitled to trademark protection.­­­­   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.


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 mark, 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 what’s called 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 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 thereafter, 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 cancelled.  Registrations cancelled due to the failure to file a Section 8 Affidavit and Section 9 Renewal cannot be revived or reinstated.

Trademark Notices

Federal registration allows you to use the ® 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.

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TITLE CLEARANCE CHECKLIST

1.  Avoid titles that would confuse people into mistakenly believing that your work is associated with, endorsed by, or licensed for use by another party.    

2.  Likelihood of confusion (the test for trademark infringement) isn’t just about confusion between similar literary titles. Protectable titles in one media (movies, video games, podcasts) may be protected in different media (books, sound recordings) if there is likelihood of confusion.

4. In evaluating search results consider the following:   

            Has the term or phrase achieved widespread public recognition? 

            How similar are the marks? 

            Is the mark used on related goods or services?

5.  To be protectable a trademark must be distinctive. Registration is not required.

6.  Goods / services can be related if they are in a competing field, are marketed through the same trade channels and sold to the same class of consumers, or if it’s reasonable for consumers to believe the trademark owner approved the use of the title. 

7.  Use only so much of a mark as is reasonably necessary to describe the trademarked goods or service and do nothing in conjunction with that which would imply sponsorship or endorsement, such as using the same style of lettering or layout.   

8.  Descriptive terms that have not achieved public recognition as a result of widespread media attention and vigorous sales are not protected under trademark law and cannot serve as the basis of an infringement claim. 

9.  Courts compare the total image of products and their packaging (size, format, lettering, distinctive words, illustrations, coloration, and layout) to ascertain if there’s a likelihood of confusion.

10.  The mere use of a trademark in a title is not an infringement if the title is  (a) artistically relevant to the underlying work and (b) no explicit suggestion is made that the trademark owner endorsed, sponsored or approved the work.  See #9.

11. title of a single creative work is not entitled to trademark registration unless it’s used for a series of creative works. (see #12 for exception to the single title rule).

12. While a single title (book, movie, sound recording) cannot be registered as a trademark, if it becomes broadly popular and associated  with a single source, especially when it starts generating spin-offs, and merchandise licensing tie-ins, it may be protected under unfair competition law.  

13.  It’s fair use to use a trademark in its descriptive sense to truthfully describe the trademark owner’s goods or services, provided there's no suggestion made that the trademark owner endorsed, sponsored or approved the work.

14.  Search for registered trademarks using the Trademark Office’s free database located at https://tmsearch.uspto.gov.  Next, search for common law (unregistered) marks using your favorite search engine. 

15.  Marks only need to be confusingly similar, not exactly alike. Don’t ignore descriptive marks that have become associated with a single source over time.   

16. Protectable titles in one media may be protected in different media if there is likelihood of confusion.

17. While title clearance search and trademark searches are similar, it’s best to work with a trademark attorney when attempting to register a mark.  They can tell you if the mark is registrable and if it is, improve the chances of registration.


Related Posts 

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 any specific legal advice pertaining to any specific circumstances.   It is important that professional legal advice be obtained before acting upon any of the information contained in this article.


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