Book Titles and Titles of Single Creative Works
One of the most frequently asked questions in our practice is whether book titles and other titles to single creative works (such as a title of a music album, CD, DVD, sound recording, or name or title of a play or movie) can be protected as trademarks? For many decades the United States Patent & Trademark Office (USPTO) was refusing applications for titles of single creative works on the basis that it did not function as a trademark. This means that marks for single creative works could not be registered on the Principal Register or the Supplemental Register. See the Trademark Manual of Examining Procedure (TMEP) §1202.08 where it addresses this issue and states that titles or portions of titles of single creative works must be refused. However, a title for a series of books or a series of other creative works such as a television series, magazines, comic books, or printed classroom materials can register and acquire federal trademark protection.
It can be difficult to determine if a work is a single creative work. The Examining Attorney will be responsible for making this determination based on evidence submitted by the applicant. If a book has a second or subsequent edition, one must determine if the content changed significantly. Under certain circumstance, it may be easy to recognize a series such as with magazines because the content changes with each issue. Also, live performances by a musical group, television and radio series and educational seminars are presumed to change with each new show or presentation and therefore are not considered to be single creative works. In a series of works, the applicant must submit evidence that the title is used in connection with at least two different creative works. Keep in mind that a series is not created when only the format of the work changes (for example a book that is sold in a printed version and an electronic version would still be a single creative work).
To circumvent this rule, if you do have a title for a single creative work, you may want to consider seeking protection for related services. In today's Internet age, it would be simple enough to use the title to create a blog on the subject matter and this could potentially be registered at the USPTO in International Class 41. This type of registration would act as a strong deterrent to third parties searching the USPTO database. In addition, for example if you were presenting seminars or lectures on the subject those services could receive trademark protection or you could launch a website and feature information on the subject matter and apply for registration in International Class 41.
Interestingly enough, the federal courts afford protection to titles of single creative works under the Lanham Act §43(a) if secondary meaning can be demonstrated. Recently, a decision from the Trademark Trial and Appeal Board (the "Board") issued that appears to fall in line with the federal courts. See In re King Productions, Inc. Serial No. 76703458 (November 19, 2014) [not precedential], where the Board declared that the proper basis for refusal of titles of single creative works should be based on Section 2(e)(1) of the Trademark Act (a descriptiveness refusal) instead of refusal for failure to function as a trademark. See our blog post entitled, The TTAB's Recent Decision Clears A Path For Titles Of Single Works for more details on this case.
This is a significant distinction because for many decades the refusal of titles of single creative works was based on failure to function as a trademark and this prevented registration on both the Principal and Supplemental Registers. If the refusal instead is based on merely descriptiveness, this will allow the applicant an opportunity to demonstrate that the mark/title has developed secondary meaning. Assuming the applicant can satisfy this burden, the mark may be allowed to register. Although the Board opened the door for applicants to demonstrate that the title to a single creative work has acquired distinctiveness, this is a difficult threshold to meet. In addition, the Board did not mark this decision as precedential. Therefore, applicants must proceed with caution if seeking to register a title to a single creative work and should consult with trademark counsel to determine if secondary meaning has developed. If you require assistance in registering your trademark, kindly contact our office for a courtesy consultation.