While I was in San Francisco in May for the International Trademark Association’s annual conference, this issue raised its ugly head…again. So I thought it would make for a timely post - at least for this author and possibly others. I also needed an excuse to use some of my San Francisco photographs.
An issue that comes up from time to time in my practice and one that I handled regularly when I was a trademark attorney with the United States Patent and Trademark Office (“USPTO”) is that of authors seeking trademark protection for titles of books or similar works. Seeking federal trademark protection for book titles or a portion of a book title (known sometimes as “phantom marks”) may be an import issue and branding strategy for some authors, especially if they would like to prevent others from using the same or similar title on competing books. Unfortunately for authors, however, the USPTO does not issue trademark registrations for a book title of a single work.
Section 1202.08 of the Trademark Manual of Examining Procedure (“TMEP”) (the trademark examination guide followed by trademark examiners at the USPTO) states the following (with emphasis added):
1202.08 Title of a Single Creative Work
The title, or a portion of a title, of a single creative work must be refused registration under §§1, 2, and 45 of the Trademark Act, unless the title has been used on a series of creative works. The title of a single creative work is not registrable on either the Principal or Supplemental Register. Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1162, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002) ("the title of a single book cannot serve as a source identifier"); In re Cooper, 254 F.2d 611, 615-16, 117 USPQ 396, 400 (C.C.P.A. 1958), cert. denied, 358 U.S. 840, 119 USPQ 501 (1958) ("A book title ... identifies a specific literary work ... and is not associated in the public mind with the publisher, printer or bookseller...."); In re Hal Leonard Publishing Corp., 15 USPQ2d 1574 (TTAB 1990) (INSTANT KEYBOARD, as used on music instruction books, found unregistrable as the title of a single work); In re Appleby, 159 USPQ 126 (TTAB 1968) (title of single phonograph record, as distinguished from a series, does not function as mark).
Authors, and even some practitioners not well versed in trademark law, are blindsided with this harsh reality when they receive Office actions from the USPTO refusing registration of their respective “trademarks” – or book titles. First reaction may be a sense of panic, since it may now appear that all of that hard work writing the book (believe me, I know…), obtaining the domain name corresponding to the title of the book and working with a somewhat disagreeable-at-times-publisher has not resulted in proprietary rights in the title – or a portion thereof - of my book! Second reaction may be to ask the question “what do I do now…!?” The frequent answer from USPTO trademark examining attorneys handling these cases - and even perhaps from legal counsel – is “write a second book!” Once you have written your second book, they say, (oh that’s easier said than done), you would have a book series, which may entitle you to trademark registration protection for your title. But what should be done in the meantime to keep others from using the same or similar title?
Ok. So, here you are. Not in a place you wanted to be. Was your situation avoidable? Doesn’t looks like it, right? The law is the law. One book, one title = no trademark registration. Series of books, one title = trademark registration. Wrong. Understanding the intricacies of trademark law and the TMEP before filing your trademark application could have avoided the rejection to registration.
The preparation and filing of a trademark application itself is only the administerial piece to the trademark registration puzzle, not the legal piece. Most of the work and strategy takes place before a trademark application is prepared and filed. Remember, as I have said before, there are attorneys that handle trademark cases and then there are trademark attorneys. Enough said. Trademark applicants should anticipate issues that may arise during trademark application prosecution and be equipped with a strategic “road map” for overcoming USPTO objections. Reacting to USPTO Office actions is a loser’s game. Anticipating those objections is the best way to ensure that brand owners have the best chances for successfully registering their trademarks.
Navigating this "Slippery Slope"
For authors seeking protection for a title of a single book, and assuming that it contains at least one distinctive portion or term, meaning that the entire book title does not simply describe the subject matter of the book (for information on that point, check out a couple of my blog posts here and here), they should work with the publisher to create a design logo (think of the logo for the publisher Penguin Group) that includes the book title. Once that logo has been approved by trademark counsel, authors should use that logo on the book itself, which would contain the title of the book. As long as the logo is used in an acceptable trademark manner, the logo – which includes the title of the book - should be registrable.
There are also other strategies for protecting (registering) a portion of a book title. That is especially important if an author intends to create a series of books surrounding a certain theme and wishes to modify the title slightly with each new book. Authors should also consider other important trademark (and copyright) aspects while creating their brands around their books and creative works. Putting all of the pieces together before a book publishes is the best strategy for building a successful brand and securing your intellectual property rights for the published work(s).