From time to time, we receive inquiries from authors about registering book titles as trademarks. Sounds like a good idea but can it be done? The short answer is “no,” trademark law does not permit registration of a work’s title. But, as with many legal rules, there are exceptions.
The complete title of a work may be registered as a trademark if the work’s title is used on at least two different creative works thereby establishing the title as a trademark for a series of works. Children’s book titles are commonly registered as a series of works. For example, Two Cool Doods, The Little Green School, Monster Catchers, and many others. The trademark applicant must exercise care in providing evidence of a series. If only the format of the work has changed, such as publishing a written and audio version of the work, the applicant will not persuade the trademark examiner that the work is a series. Similarly, the title of an abridged or unabridged version of the work does not establish a series; nor does use of the title on posters, mugs, bags or t-shirts.
An author may also register a portion of a book title as a trademark if he or she can establish that:
- the portion of the title to be registered must create a separate commercial impression apart from the complete title;
- the title is used on a series of works; and
- the title is promoted or recognized as a mark for the series.
The Trademark Office states that the applicant has a heavy burden in establishing that the title is used in a series. The mere use of the same words in more than one book title is insufficient proof. Instead, the applicant must establish that the public perceives the title to be a mark for a series.
So, you can see that there are strategies for registering a book title as a trademark but the process is tricky. If you’ve been thinking about registering a book title, we can help determine the appropriate application strategy.
— Adam G. Garson, Esq.