What are common problems in registering a trademark on books?
Books, DVDs, CDs, films, videos and other media containing creative content are generally considered creative works. It’s natural for an author of a book or other creative work to think about protecting the title as a trademark. The specific challenge in trademarking creative works is that the USPTO might reject your application on the grounds that the mark is a title of a single work.
What is a title of a single work?
In order for a title of a book or creative work to be registrable, the trademark owner must show that the title is being used on a series of books, and not merely on a single work. What this means is that content creators need to be thinking of producing multiple a series of creative works (e.g., multiple books, editions, issues, performances, etc.) in order to have a protectable trademark.
The USPTO provides a helpful summary on the problem of a title of a single work.
A single creative work is one in which the content does not change. This may be the case for a variety of materials and media such as books, sound recordings, downloadable songs, downloadable ring tones, videocassettes, DVDs, audio CDs and films [see TMEP 1202.08].
Why can’t the title of a single work be trademarked?
Countless books are published without trademark protection. Keep in mind that the primary purpose of a trademark is to indicate the source of the goods or services. A book title does not necessarily serve such a source-identifying purpose.
When a series of creative works are made and published under a particular title, the potential for the title to indicate source is greater.
What is a series of creative works?
Examples of a series of creative works include works labeled as:
- Volume 1
- Part 1
- Book 1
The content must change with each successive issue or performance. A “new and revised” version of a book might be sufficient to form a series of works if the revisions are significant.
Is it necessary to produce a series of creative works before filing a trademark application?
No. You can file an Intent-To-Use application identifying the various publications and media products that you intend to sell under your desired trademark. However, you will need to show evidence of a series of works before submitting use evidence to the USPTO.
What are recommended next steps for a creator of a single creative work?
If you have created a single work thus far, you have already cleared a major obstacle in protecting your trademark. One option is to file an ITU application promptly for the title of your work as you plan on creative the second work.
Once you have completed your second work, you will be ready to submit evidence of use to the USPTO showing that you have launched a series of works.
Title of a single work in US application based on Section 44 foreign filing
If the US trademark application is based on a foreign trademark registration under Section 44(e), the USPTO trademark examining attorney may reject the application on the grounds of the mark being a title of a single work. Therefore, it would be prudent for applicants with a Section 44 claim to maintain the Section 1(b) Intent-To-Use filing basis and follow through with evidence of use on a series of works in US commerce [see TMEP 1202.08(f)].
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