Navigating the Maze of Title Selection: Captivate Readers & Avoid Legal Pitfalls

Are you aware that a trademark for goods or services might hinder your ability to use a book title? That's why incorporating a trademark search into your editorial process isn't just a precautionary step—it's a strategic move to sidestep infringement, safeguard your brand, and preempt legal disputes. Now, let's delve into why this proactive measure - and a working knowledge of free speech protections -- is essential for those seeking to navigate the complex terrain of title selection.

 

In book publishing, trademark, and unfair competition laws are frequently used to combat deceptive practices. These laws target those who attempt to mislead consumers by falsely suggesting that their goods, including books, blogs, and businesses, carry third-party endorsements or approvals. 

 

Therefore, before forging ahead with the title of a new book or book series or the name of a new publishing company, it's advisable to conduct a trademark screening search to ascertain its legal availability. Otherwise, if the name you've selected closely resembles an existing trademark linked to related goods or services, it could be deemed as trademark infringement. Further, if the trademark owner has registered their trademark with Amazon's Brand Registry, they can use Amazon's takedown tool for the swift and frictionless removal of the infringing book. Worse still, the potential for litigation looms. 

Trademark is the New Copyright

In an era where AI-generated content increasingly competes with human-authored works for visibility and sales, the struggle for discovery on platforms like Amazon intensifies. The above sub-heading, "Trademark is the New Copyright," aptly captures this evolving landscape. As AI-generated books flood the market, distinguishing oneself as a trusted source becomes paramount. Building an author brand and securing trademark rights in series titles or company names not only establishes credibility but also acts as a beacon of authenticity amidst the deluge of algorithmically generated content. Therefore, the strategic adoption of trademarks serves as a proactive defense against legal complications, reinforcing the imperative of conducting trademark screening searches before finalizing any branding decisions. In essence, trademarking isn't just about legal protection—it's about fortifying one's position as a reliable creator in an environment where trust is increasingly elusive.

 

 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 #1. If the name of your existing business is evocative, memorable, and differentiating, consider it as the title of your book. If consumers were to see a  confusingly similar book title and reasonably believed it was associated with your business, you may have a viable unfair competition or trademark law - notwithstanding the so-called single title rule.   

Making a Title Screening Search Part of the Process is Important

The focus of the analysis is the likelihood the public will believe your book was published or approved by someone else, including a well-known brand owner. The most important likelihood of confusion factors are:  (a) the similarity of the marks, (b) the relatedness of the goods or services, which could be a book series, a podcast series, an online course, consulting or coaching services), and (c) the marketplace strength of the mark.

A knock out search is a trademark clearances search which helps identify identical marks, and those in close resemblance. The Trademark Office's free online database of every federal trademark registered or applied for in the U.S. is invaluable for identifying identical and similar marks for related goods or services. Known as TESS (Trademark Electronic Search System), the database is located at http://tmsearch.uspto.gov.  

If 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 title. 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 by a professional trademark search firm, including state trademark databases and internet sources, is recommended if registration is contemplated.

Important! 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 titles 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 them 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

Because 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 to Protect a Single Book Title (and the Business Behind it)

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?

While the first book in a series cannot be registered, the Trademark Office will allow an author 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 an Intent to Use application is the filing date will serve as the date of first use if you complete the registration process. Another advantage 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, you will need to publish book two in the series to obtain a federal registration.   

 

While you can't register a single book title, you may be able to register the trademark used by the business behind the book. So, for example, if consumers reasonably assume that the owner of a fashion consulting was the author of a book on fashion design and marketing, but they weren'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 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. 

  

How to Trademark a Book 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 specimen refusals and improper description of goods and services.

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

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. However, 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 familiar with Trademark Office practices. 

A federal trademark registration can last forever, provided timely renewal applications are filed and the mark remains distinctive for the goods or services it is linked to.

 
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 asserting a good faith defense more difficult for a trademark infringer. 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.

Trademark Registration

 

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.   Professional legal advice must be obtained before acting upon any of the information contained in this article.