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. So why is it so hard to trademark a book? The problem lies in the number of books written. When you have only one book or creative work, the USPTO may reject your trademark application on the grounds that the mark is a title of a single work. To understand how to trademark books, you first must have more than a single work to protect. The USPTO provides a helpful summary on the problem of a title of a single work.
In other words, you need multiple books or a series of works.
What is the problem with trademarking a title of a single work?
In order for a book title 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. This means that content creators should be thinking of producing a multiple creative works under a particular title. Use the same title when you create multiple books, editions, issues, performances, and other such creative works.
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].
Keep in mind that the primary purpose of a trademark is to indicate the source of the goods or services. A book title of a single work does not necessarily serve such a source-identifying purpose. Countless books are published without trademark protection.
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.
How to trademark books that have not been written
You don’t have to write a book first before filing a trademark application. You can file an Intent-To-Use application identifying the various publications and media products that you intend to sell under your desired trademark. Eventually, you will need to show how you used the trademark on a series of works.
What are recommended next steps for a creator of a single creative work?
If you have created only a single work thus far, don’t be discouraged. You have already cleared a major obstacle in protecting your trademark. You can start by filing an ITU application, as discussed above. In the meantime, begin creating your second work under that same title.
Once your second work is completed, 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. Section 44 applicants can then follow through with evidence of use on a series of works in US commerce [see TMEP 1202.08(f)].