The short answer, it depends. The title of a single creative work, such as a book, is not considered a trademark and is therefore unregistrable. Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§ 1051, 1052, and 1127; In re Cooper, 254 F.2d 611, 117 USPQ 396, 400 (CCPA 1958).
This because the title of a single book “describes the book, and is not associated in the public mind with the publisher, printer of bookseller.”
“The policy behind this is clear. Because a trademark can endure for as long as the trademark is used, at the point that copyright protection ends, others have the right to use the underlying work, they must also have the right to call it by its name.” Herbko Int’l Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375 (Fed. Cir. 2002).
“Single creative works include works in which the content does not change, whether that work is in printed, recorded, or electronic form. A theatrical performance is a single creative work because the content of the play, musical, opera, or similar production does not significantly change from one performance to another.” In re Posthuma, 45 USPQ2d at 2014; TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) §1202.08(a) (2019).
For example, “educational services such as university courses are different from scripted theatrical performances. In fact, TMEP specifies that “[l]ive performances by musical bands, television and radio series, and educational seminars are presumed to change with each presentation and, therefore, are not single creative works.” TMEP § 1202.08(b).”
However, if the title identifies a series of works, it performs a trademark function and is registrable.
“The name for a series, at least while it is still being published, has a trademark function in indicating that each book of the series comes from the same source as the others. The name of the series is not descriptive of any one book and each book has its individual name or title. A series name is comparable to the title of a periodical publication such as a magazine or newspaper.” In re Cooper, 254 F.2d 611, 117 USPQ 396, 400 (CCPA 1958), cert. denied, 358 U.S. 840 (1958).
Courts, however, have protected the title of a single work once secondary meaning has been established.
In the case of book titles, a trademark application can be refused, under Section 2(e)(1) of the Lanham Act, if “(e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them”.
A descriptiveness refusal can be overcome under Section 2(f), the proposed mark has acquired distinctiveness.
“Distinctiveness is acquired by “substantially exclusive and continuous use’ of the mark in commerce.” In re Owens-Corning Fiberglas Corporation, 774 F.2d 1116, 227 USPQ 417, 424 n. 11 (Fed. Cir. 1985). A title of a single work can be registered if the mark has acquired distinctiveness such that it is no longer regarded merely as the title of a single work, but an indicator of source.
“To show that a mark has acquired distinctiveness, an applicant must demonstrate that the relevant public understands the primary significance of the mark as identifying the source of a product or service rather than the product or service itself.” Steelbuilding.com, 15 F.3d 1293, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005).
I have helped countless small to medium sized businesses navigate the intricacies of genericness and descriptiveness in trademark law to secure and protect their intellectual property rights. I’d like to help you too by protecting your rights to trademarks, copyrights, and other intellectual property rights in the US and overseas before a trademark squatter does.
Augusto Perera, Esq.
Intellectual Property, Business and Legal Affairs Attorney
Augusto Perera, P.A.
2525 Ponce de Leon Boulevard
Coral Gables, FL 33134
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