Can I Use a Title that Someone Else Has Already Used?

As an author or publisher, you know the power of a well-chosen title in attracting readers and establishing your brand. However, amidst the excitement of finding the perfect title, it is crucial to tread carefully and consider the legal implications. If your chosen title is likely to cause confusion with an existing brand or trademark for related goods or services, you could find yourself in a serious predicament. In the unfortunate event that your book is found to be infringing someone's trademark rights, you may face two possible outcomes. Firstly, the aggrieved party can initiate a straightforward online takedown request with online retailers, resulting in your book being removed from their platforms. Secondly, and more significantly, you may have to respond to a lawsuit. For these reasons, it's important to integrate a title search into your process to protect your reputation as an author or publisher.

Trademark Law in a Nutshell

Trademark law serves as a means of consumer protection, focusing on preventing buyer confusion. The key element in any trademark claim is the "likelihood of confusion," a term that can be challenging to define. It serves as the test for determining trademark infringement. It's important to note that even if a trademark hasn't been registered, if you misrepresent the source or approval of your book, it is still a violation of unfair competition and trademark law.

Can I Use a Title that Someone Else Has Already Used?  

The test for trademark infringement is the probability consumers will be deceived about the source of your book when they see it. It’s a factor analysis. Similarities in sight, sound, and meaning, and the relatedness of the goods 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 direct competition.

Unlike series titles (discussed later), a title of a single creative work cannot be registered as a trademark unless it has attained secondary meaning, which is a function of significant sales, advertising and promotion.  Generic titles (100 Best Science Fiction Movies) standing alone are not entitled to trademark protection either.