But like it or not, this prejudice against trademark protection for single book titles has persisted now for nearly a century, and it is firmly ensconced in trademark office policy and practice. According to, a trademark can create opportunities for multiple passive income streams from licensing the sale of bookrelated merchandise and paraphernalia. Scott fitzgerald published his little novel, could i call my novel the great gatsby. Trademark infringement is the unauthorized use of a trademark or service mark on or in connection with goods andor services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods andor services. Single book titles no longer protectable as trademarks. Trademark law protects words, slogans, logos and even designs that identify the source of goods or services. The formal position of the office is simply that book titles must be refused registrationwith one exception discussed below. In order to protect your book title, you cannot rely on trade marks. Generally, the title to a single motion picture is not entitled to trademark protection. Copyright and trademark protections for song titles and.
A trademark does not prohibit the use of the wordnamesymbol altogether. Patent and trademark office uspto will not register a trademark for a standalone work. The title to a series of books such as the for dummies series, or a title of a single book that has become famous, such as the da vinci code, is considered a trademark and will be vigorously defended. You cannot trademark the name of a single creative work. Unlike traditional trademark infringement, neither likelihood of confusion, nor competition between the parties goods is required. Selecting and protecting the title of your book how to use. A book title is not protected by but may be protected by trademark law.
The general rule is that book titles unless part of a series cannot be registered as trademarks. It can also create opportunities for multiple passive income streams from licensing the sale of bookrelated merchandise and paraphernalia. Even if the book title belongs to a series, secondary. This is the same for the title to single books, songs and other. Trademark protection for literary titles of single works is unique in trademark law. Dec 27, 2010 the four areas of law to consider in connection with brand names are trademark infringement, trademark dilution, trademark tarnishment,and defamation.
As a general rule, book titles cannot be trade marked due to one simple reason. There is a game called team fortress and i think its trademarked. If youre thinking about using a song title on a bumper sticker or tshirt, you will probably want to consider whether trademark law might apply and, if so, whether a federal trademark was filed in the uspto trademark database. Trademark protection for book titles revision legal. A great title can contribute tremendously to a books success. Mar 03, 2015 even if the trademark owner seems keen on the movie idea, trademark law frowns on a trademark owner who doesnt protect the use of their name, threatening generification of the trademark i.
Folks, you can properly use use trademarks in book titles, just like the for dummies series uses literally hundreds of trademarks in its book titles. If not in the title, what about in my book s pages. Also, make sure you check that the title and subtitle have the right keywords you want to address your market, and aligns with any domain and brand issues you have. You cant trademark your book title, except when you can.
It will permit registration for a trademark associated with a series of works, such as a book series. Protection of movie titles through intellectual property laws. Some ways that you may use the wordnamesymbol while avoiding trademark infringement include. Furthermore, titles of a series of books, periodicals or newspapers may be protected without proof of secondary meaning. The law is clear that you cannot trademark individual book titles, but a. I have written a self help book with a catchy title. Titles trademark law will not generally protect unlike series titles, titles of a single work, whether a book, periodical, song, movie, or television program, generally, will not be protected under either trademark or unfair competition law. Avoiding a trademark infringement lawsuit is so easy. For instance, a book title that is well known and usually associated with a specific recipe. To maintain a trademark s value, owners must vigorously defend and protect their brands against tarnishment, infringement, and misappropriation by others.
Specifically, literary works are given trademark protection only upon a showing of secondary meaning. Properly selected and maintained, your book s title can be your most valuable intellectual property asset. Trademark rights protect the logos, symbols and textual representations that uniquely identify goods in commerce. The issue here is that the book is really focused on one show, not one genre, or even subgenre. The test for trademark infringement is likelihood of confusion. Lets meet copyrights half sister the book designer. Properly selected and maintained, your books title can be your most valuable.
Once she obtained the registration, she apparently threatened other authors who used cocky in their book titles with trademark infringement suits, and approached amazon asking them to remove from sale her competitors books with cocky in the title. The work to be registered could be one work, a collection of works or an individual contribution in a larger work. Series titles are eligible for federal trademark registration and may be registered with the united states patent and trademark office pto. Trade mark laws do not fully fulfil the function of protecting book titles. Trademark infringement cases involving a registered mark for a series of books are not especially common, but they do come up from time to. What the federal trademark dilution statute does 15 u. Book titles are generally not protected under trademark law unless they are part of a series. Davd147 may be well intentioned, but he is not an attorney and does not know what he is talking about. If you are the author of a book and wish to have a registered trademark for the title of the book some thought needs to be given about. What will happen if someone sues me for trademark infringement.
The arrangement of words in a book title cannot be trademarked. My question is, can i legally use this trademark the simpsons in my book title. No trademark protection in book or movie titles by scott hervey on february 6th, 2020 posted in ip, trademark law. It can also create opportunities for multiple passive income streams from licensing the sale of book related merchandise and paraphernalia. You cant trademark your book title, except when you can small. Trademark infringement remedies, second edition provides owners and their counsel with the uptodate information they need to do this effectively. Trademark infringement remedies, second edition intellectual. Examples of commercial purposes include advertising, merchandise, and presentations. This is true despite the fact that the title of book is not descriptive of its contents. Oct 22, 20 for a discussion on trademark issues, continue reading. Heres an article about the topic trademarks for book titles can you get one.
David koehser attorney at law 6122044567 trademarks. Patent and trademark office thinks the duplication of titles would be confusing or would dilute someones brand. This is the title of the specific work you want to register. The three trademark issues that most frequently arise in publishing are. The reasoning behind this is that trademarks are really meant to function as the identifiers of goods and services, and book titles dont really fulfill that function. One of the most common questions about trademarks i answer on a daily basis is if one can trademark a book title or not. Is it trademark infringement to publish an online article with the title naacp. Registration of titles as trademarks with the united states patent and trademark office requires that the work designated by the title is not a single film, television show, or book. For example, if you write one, individual book called i love trademarks, then you will not be able to trademark this title.
The term single title refers to a particular book title, such as gone with. Canada has now adopted the practice, followed in the united states and many other jurisdictions, that the titles of single books are not protectable as trademarks. That reason is that trade marks generally exist to protect the reputation in goods and services. A great title can contribute tremendously to a book s success. If it is being used on a television series, book series or other continuing work, registration is possible and recommended.
It is wellestablished that the title of a single work, such as a book, is not considered a trademark, and therefore is unregistrablein essence, the title of a work is treated as the name of the work, and therefore as describing the work. Trademark basics trademark registration and advice. Oct, 2014 is it trademark infringement to publish an online article with the title naacp. May 25, 2018 in addition to threatening other romance authors with potential trademark infringement lawsuits, she requested amazon to take down pages for other authors books because they used cocky in their titles, and amazon initially complied because of the trademark registration. Im thinking of replacing the word team with another word and. Is there a trademark infringement if the publisher does exactly this without getting a limiteduse license first. As i discuss below, under trademark law, some titles are more worthy of trademark protection than others. The federal court of canada made the change in january 2009 in drolet v. Act is the federal statute which governs trademarks. While many book titles arent trademarked, some are because the phrase is used for more than just the books title.
A novel, song, movie or painting entitled, the sun also sets no other. A classic case of trademark infringement is the unauthorized use of a name in a way that creates a likelihood of confusion as to the origin of the goods or services. A trademark cannot be used for a commercial purpose without permission from the owner. Kleenex or aspirin where they could lose their mark if not actively protected and controlled. No trademark protection in book or movie titles the ip law blog. David koehser attorney at law 6122044567 trademarks and. The trade mark owner could doubtless assert his rights to stop a third party producing another book with the same title but not from reproducing existing books in that case, there would be a defence to trade mark infringement as the mark would be being used in relation to the genuine article s. For example, using rent as the title of a book may constitute trademark infringement, even though the only previous use of that title was for a musical. However, you can trademark a book title if you write a series of books using that title. In addition to threatening other romance authors with potential trademark infringement lawsuits, she requested amazon to take down pages for other authors books because they used cocky in their titles, and amazon initially complied because of the trademark registration.
So the ttab is saying that title is a synonym for name, which isnt very helpful. The reasoning behind this is that trademarks are really meant to. Stiftung gralsbotchaft 2009 fc 17, a decision that significantly alters proprietary rights in single book. National association for the abortion of colored people. Trademark infringement cases involving a registered mark for a series of books are not especially common, but they do come up from time to time. May 30, 2019 a trademark is more difficult to get than a, but you might be able to trademark a book is the u. And the great gatsby does not appear to be a federally registered trademark for books or movies although, curiously, there is a great gatsbys registration for auction services. Writers should also avoid using titles that are the same as or confusingly similar to the title of another entertainment work. Qualifications and filing procedure judges gavel on book about infringement. Using a trademarked name in a book title using a trademark in the title of a howto guide for the use of a software product or computer hardware would normally fall under nominative fair use the use of somebody elses mark to refer to the actual product or service that is associated with the mark. No trademark protection in book or movie titles the ip. So, how to write animated comedy tv shows is not the focus of my book, and thus a somewhat inaccurate title. Jun 08, 2018 her titles include cocky biker and cocky cowboy to name a few. Only the way the title looks can be protected as a mark, such as the way the font, design and colors combine to make it recognizable as the title of a particular book.
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