Showing posts with label How to Trademark a Book Title. Show all posts
Showing posts with label How to Trademark a Book Title. Show all posts
Thursday, February 3, 2022

How to Select a Book Title (and Not Get Sued)

Trademark Series Book Title
Trademark Registration Certificate
Choosing the perfect book title is not just a marketing decision, it is a legal determination. It should provoke interest and curiosity in the book (or the product or service you sell on the back end) and not a lawsuit by an aggrieved trademark owner or removal of your listing by Amazon.com.  
 
A screening search will alert you if a book, podcast, or title of another creative work is likely to encounter legal problems.  In the world of media perils, an attorney clearance report is needed to obtain errors and omissions insurance.   
 
Why Do a Trademark Screening Search? 
 
A screening search reduces the potential for trademark infringement claims. Before finalizing your title selection, it's important to do a preliminary search to determine if any similar or identical marks are used for related goods or services. While it is true that titles are not protected by copyright, if potential purchasers are likely to be confused about the source or sponsorship of a book, it could result in a trademark infringement or unfair competition claim. 
 
Making a Screening Search Part of the Process is Easy
  
A proper investigation includes using the Google search engine and the Trademark Office's 24/7 online database. These are invaluable tools for identifying obvious conflicts – identical or similar marks for related goods or services. Referred to by trademark attorneys as TESS, the free Trademark Electronic Search System database is located at http://tmsearch.uspto.gov

When doing a screening search, the central question is whether there is a confusing similarity to someone else's mark.  In evaluating the likelihood of confusion, the three key considerations are:
  • Has the mark been registered? 
  • How similar are the marks? 
  • Are the goods or services related?

Similarities in sight, sound, and meaning, and the relatedness of the senior user's goods and services are the key vectors in any trademark infringement analysis. 

If the title you’ve selected is already registered by someone for related goods or services, absent a valid First Amendment defense (discussed later), soldier on and select another title. Put another way, if they cared enough to register their mark, there’s a good chance they are prepared to fight to protect it. 

CAUTION. Trademark rights are obtained through use, not registration.  That means you should also search the internet for marks that may raise legal issues. If seeking to register a trademark, a comprehensive full search and attorney clearance opinion is recommended. 

Free Expression and Fair Use Exceptions

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 as the title of a 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 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. 

No matter how clever, single titles are not entitled to trademark registration.  However, if a single title attains secondary meaning -- a level of commercial magnetism associated with a runaway bestseller -- it can still be protected absent registration. 

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 trademark owner's rights. 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 a deeper dive on title clearance, click here

A Warning Before You Start Your Search

Trademark Clown Juggling Unique WordsBecause of the malleability of trademark law, the decision to move forward with the title you've selected 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 title is registerable as a trademark. Additionally, they will help you navigate the trademark registration maze. 

How to Trademark a Book Title

A trademark registration gives you the exclusive right to use a trademark. Once you register a trademark, you can stop others from using both identical and confusingly similar marks for related goods or services.  

However, a single book title cannot be registered as a trademark unless it is used for a series of works (e.g., Harry Potter and the Philosopher's Stone, Harry Potter and the Chamber of Secrets).  In other words, a trademark can only be tied to a series of literary works, not a single title. 

The rationale for the “single title rule” is that once a book enters the public domain, it should remain there, and the public should have the right to identify it by its original title.

So how do you protect the first title in what you hope will be the next Hunger Games trilogy or Harry Potter series of fantasy novels? 

How Do I Protect the First Book in a Series?

The are to two ways to acquire trademark rights. The first is based on being the first to use the mark in connection with the sale or marketing of specific goods or services. The second is to be the first to file an Intent to Use application with the Patent and Trademark Office. After the PTO trademark examiner approves your Intent to Use application, you will have six months within which to file a Statement of Use. If you need more time to publish the second book in the series, you can file for multiple six-month extensions. By filing an Intent to Use application, you are staking out a claim to the title. 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.

When you obtain the registration for your title, the date you filed the Intent to Use application will serve as the date of first use. That gives you priority over those who began using the trademark after you filed.

A slightly different process is involved if you have an established book series. In either instance, you will need to publish book two in the series to obtain a federal registration.
 
If You Can't Protect a Single Title, Protect the Business or Website

While you can't register a single book title, you may be able to register a trademark for related goods or services, e.g., your business or a companion website. If consumers would reasonably assume that the owner of a product or service 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 (discussed later). 
 
Tip. Remember, trademark infringement is not simply a book-to-book, blog-to-blog, or app-to-app comparison. While conventional wisdom says you can't compare apples to oranges, they are both grown in orchards, are considered a fruit and are sold in the same section of your local supermarket. That makes them related for purposes of trademark law. If you don't have a book series, register the mark for the business behind the book, the website, or a related product or service. 

Unfair Competition

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.

Did you know the trademark for an existing business could prevent you from using a book title?

Suppose you are the owner of a successful business.  Under those circumstances, if consumers saw an unauthorized book with a confusingly similar title to your company and believed it was endorsed by you, that deceitful practice would fall under unfair competition law. 

Case & Comment. 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 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.

For a deeper dive on trademark fair use and title clearance, click here.  

###

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 the 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 a likelihood of confusion.

3. In evaluating search results, consider the following:   

. Does the word or phrase have widespread public recognition?

. How similar is the word or phrase to your proposed title?

. Is the word or phrase used for related goods or services?

4.  Important! 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.   

5.  Protectable titles in one media may be protected in different media if they 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. 

6.  Descriptive terms that have not achieved public recognition due to widespread media attention and strong sales are not protected under trademark law and cannot serve as the basis of an infringement claim. 

7.  Not just words, but the look and feel of a book jacket can infringe an existing trademark. Courts look at the total image of the book cover (format, lettering, distinctive words, illustrations, colors used, and layout) to ascertain if there’s a likelihood of confusion.

8.  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 #7, #14

9. A single book or other creative work title is not entitled to trademark registration unless used for a series of creative works. See #10

10. While a single title for a creative work (e.g., book, movie, or song) 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.  

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

12.  Search for registered trademarks using the Trademark Office’s free TESS database.  Next, search your favorite search engine for common law (unregistered) marks for related goods and services. If you intend to register your title after you've ruled out obvious conflicts, obtaining a full search and registrability opinion is highly recommended. 

13.  While title clearance and trademark searches are similar, it is best to work with a trademark attorney to register a series title or the name of a business.  They can tell you if the mark is registrable and improve the chances of registration.

14.  WHEN IN DOUBT, CONTACT A TRADEMARK ATTORNEY. 

  

For More Information:

Contract attorney Lloyd Jassin at jassin@copylaw.org or at (212) 354-4442.  His offices are in the heart of Times Square, in The Paramount Bldg., at 1501 Broadway, FL 12, NYC, 10036.  Follow the Law Firm and Lloyd on Twitter at http://www.twitter.com/lloydjassin 


DISCLAIMER / TERMS OF USE

Not Legal Advice.  The information contained in this blog is intended as general advice.  Because the law is not static, and one situation may differ from the next, we cannot assume responsibility for any actions taken based on information published here.  Be aware that the law may vary from state to state.  Therefore, this blog cannot replace the advice of an experienced attorney.  No attorney-client relationship is created by your access to or use of this website.   Contacting us by email does not create an attorney-client relationship.  If you wish to establish a professional relationship, it must be done through a mutual agreement in writing.  Please do not send us any confidential information until an attorney-client relationship has been established.

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

Related Posts 

Trademark Law and Book Titles

Common Copyright Permission Myths

 

Monday, December 13, 2021

Why You Should Add a Trademark Search to Your Editorial Process

How to Protect a Book Title
Protecting Book Titles


Integrating a trademark search into your editorial process is a strategic and proactive measure to avoid infringement, protect your brand and prevent legal challenges. 
 
In the realm of book publishing, trademark and unfair competition law are frequently used to combat deceptive practices, targeting 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 for 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 possess the option to utilize Amazon's takedown mechanism for the swift and frictionless removal of the infringing book. Worse still, the potential for litigation looms. 
 
The key takeaway is that a robust trademark strategy can proactively prevent legal entanglements, underscoring the importance of conducting a trademark screening search before finalizing any decisions related to titles or brands. In an age where brand identity holds paramount importance, and with artificial intelligence vying with human authors, it could even be said that trademarks have become the new copyright.
 
Did you know that a trademark for goods or service may prevent you from using a book title?

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. 

Book Title Publishing Attorney
Trademark Registration Certificate
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. 

Keep Track of Trademark Office Deadlines

A registered trademark can last forever, provided timely renewal applications are filed and the mark remains 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.

Why Use a Trademark Notice?
 
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.   Professional legal advice must be obtained before acting upon any of the information contained in this article.