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Can a book title be registered as a trademark?

I am often asked whether a book title can be registered as a trademark in the U.S. If we are talking about the title of a single creative work, the answer is simple: NO. But what if we’re talking about a mark used with a series of books? And what’s considered a “single creative work,” anyway? That’s where things get much more interesting.

No doubt, at some point in your life, you’ve seen a book with a registered trademark on the cover. When I was a kid, my parents bought me stacks of Nancy Drew books. They had titles like “The Secret of Shadow Ranch,” or “The Clue in the Diary.” None of those titles are registered as trademarks. BUT, each book also had this wording at the top: “Nancy Drew Mystery Stories.” That exact wording IS a registered trademark. So how does that work?

Remember that a trademark always has one job: it’s a source identifier. It tells us where to go to get more of particular goods or services. A title like “The Clue in the Diary,” doesn’t help us figure out where this book came from or what we can expect from it. But, if a kid enjoys a Nancy Drew Mystery Stories book, then their parent can feel reasonably confident about buying another Nancy Drew Mystery Stories book; it will have a similar style, themes, etc., and hopefully the kid will like the new book, too. When it’s used in this way, that wording “Nancy Drew Mystery Stories,” does the same job as the wording on the bag of your favorite snack: it’s telling us we can rely on what’s inside to give us more of a positive experience we had before.

This type of trademark use is easy to find with children’s books. There are so many series with names that are registered as trademarks: “The Magic School Bus,” “Lemony Snicket,” “Eloise,” etc. For adults, this type of trademark is more commonly used with certain types of books, especially cookbooks like “WeightWatchers,” “Pillsbury,” or “Alton Brown.”

Is a series the only thing that’s NOT a single creative work?

Be careful not to be misled by the term “single creative work.” This is a phrase that has a special meaning for the USPTO. There are certain types of books that simply are not considered a single creative work. In general, a book is NOT considered a single creative work if the content of the book will change significantly every time it is issued. Comic books, printed classroom materials, and guide books are a few types that fall outside of the “single creative work” category. For example, we know that when a guide book issues again, there will be significant changes: lots of information inside of it will need to be updated because certain listings for restaurants, hotels, or clubs will be deleted (maybe they’ve closed or quality has gone downhill), and new listings will need to be added to identify great restaurants, hotels or clubs that didn’t exist when the guidebook was first printed. In general, coloring books and activity books also fall outside of the “single creative work” category.

What doesn’t work to get around this problem?

Back when I reviewed trademark applications at the USPTO, I saw applicants try to wiggle around this problem in all kinds of ways. Here are a few that don’t work. If your mark is the title of your book and your book is a single creative work, you won’t get around the refusal by:

· showing that you use the mark on the same book in different formats (for example, the same book in printed form AND electronic form);

· showing the mark used on a second edition of the book if the second edition merely corrects typographical errors or makes only minor changes to the book; or

· showing the single work was issued in sections (for example, printed a chapter at a time in a magazine) and always used with the same mark.

When will you know if this is a problem?

If you work with a knowledgeable attorney, they should be able to flag this issue for you before they ever file your application (and they should be able to help guide you around this obstacle).

Otherwise, be aware that this issue may come up at different times depending on which filing basis you choose.

You want to be especially cautious if you file under an intent to use basis. In that case, the USPTO may not inform you this is a problem until you are very near the end of the application process (perhaps months or years after you file your application). That’s because in most cases the USPTO won’t review your specimen (proof that you’re using your mark out there in the real-world marketplace) until after your application has been approved for publication and a Notice of Allowance has issued. This means you may have made it all the way through the application process to the final hurdle without being warned this is a problem. By that point in time, you will have invested many months and several hundreds if not thousands of dollars into the application process. If you apply under the intent to use filing basis and receive “approval” of your application, do not assume your mark will be registered. The USPTO can still refuse your application - even after approval - if they determine that your mark is the title of a single creative work.

What about timing?

If you file under an intent to use basis, you don’t have to have a series of books on the date that you file your application. You could, for example, file your application on this basis when you have no books or just one book that incorporates the mark as long as you were able to show use of the mark on more than one book before the deadline to submit your specimen.

What about protecting everything INSIDE the book?

If you want to protect the content of your book (text, images, etc.), then you’re interested in a copyright registration for your book, not a trademark registration.

Okay, but WHY won’t the USPTO let me register the title of the book?

There’s actually a very good reason. This is one of the areas where trademark law and copyright law intersect. Copyright rights last a certain term of years. Then they expire. When someone has copyright rights in a book, and those rights expire, then the book goes into the “public domain” - meaning people are free to copy it. Trademark rights, by contrast, don’t have to expire: they can last as long as the trademark is used. The Coca Cola Company owns registrations for trademarks that are nearly 130 years old (for more, on this topic, click here). So, if someone were able to get a trademark registration for the title of their book, this could interfere with public use and copying of it even after all copyright rights in that book had expired and everyone should be able to copy it. In short, the USPTO isn’t going to let you use trademark law to extend your copyright rights forever.

This information was posted on June 7, 2021 and was accurate as of the date of writing. However, the law changes frequently, and readers should not rely solely on general online information but instead should consult a licensed attorney by asking questions about their specific issues when they need legal advice.

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