Every now and then, I’m asked by aspiring authors, songwriters, film makers, and other creative types, “How do I trademark the title of my book [or song, movie, etc.]?” In this post, we take a look and answer the question of whether titles to books can even receive trademark protection and how you can possibly protect the economic value of that awesome book, song, or painting title of yours.
Ben’s Note: For purposes of this post, I will keep things simple by referring to titles of books, but, for the most part, you can extrapolate these ideas to whatever work you’ve created, e.g., new song, photograph, YouTube video, etc.
Can I Trademark My Book Title?
First off, let’s eliminate the suspense. In general, if you try to register a trademark for the title of a single book you’ve written, you will most likely end up receiving what’s known as a “Title of A Single Work” refusal from the USPTO (U.S. Patent and Trademark Office), not to mention being out filing fees of about $300 🙁
There are several reasons for this and, for purposes of this article, I will not get into all of the nuances of Trademark Law. If you’d like to know more, simply do a search for any of my previous posts on the subject, or use the contact form to the right if you’d like to meet with me to discuss your specific trademark question.
OK, reasons… First of all, a title to a book is pretty much (some would argue purely) functional. The USPTO does not like to grant a trademark for names that are strictly functional.
Next, generic or merely descriptive trademarks are the weakest and least likely to receive trademark protection through registration. It really doesn’t get more generic or descriptive than a book title. To put it another way, the name of your book isn’t much more than a way to identify the very thing itself—your book, as opposed to being an identifier of commercial source or origin, which is what trademark law and (according to USPTO examiners anyway) trademark registration are for.
Therefore, if you’re the author of a single, one-off book, Congratulations on your book! Seriously, that’s quite an achievement for which you should be proud. But, as far as trademark protection goes, you’re most likely S.O.L.
With all of that said, let’s say you’re really really set on your title. It’s almost like your child, only you love it unconditionally. Are there any exceptions? Well, this is law we’re talking, so of course there are!
No, Really. How Can I Trademark My Book Title?
Let’s start with the more unlikely and difficult path. Just as with any other trademark that fails for reasons of generic-ness or mere descriptiveness or being insufficiently distinctive, your super catchy title to that single creative work of yours may be able to receive trademark protection if you can show that it has become so famous and well-known to the consuming public that it actually now serves as more than just a description of the work but a brand in its own right. This is what we trademark lawyers call “acquired distinctiveness ” or “secondary meaning”.
As you can probably guess, secondary meaning would necessarily require that your book title has been used in commerce for a while or at least long enough to receive consumer recognition, wide promotion, and significant commercial success. I say this is extremely difficult because it not only involves whatever efforts and money (not to mention sheer luck) would be needed to obtain that consumer recognition but also to demonstrate this to the USPTO’s satisfaction (i.e., through things like formal consumer surveys, market studies, etc., none of which are cheap).
Now, on to the other way that you can trademark your book title.
While titles of single creative works are, in and of themselves, not generally capable of being trademarked, if the book title is but one in an existing or planned series of books, then the name might very well be protectable under trademark law and capable of registration.
Generally speaking, titles of works that are part of an ongoing series are protected under trademark and unfair competition law. For example, just think about such well-recognized how-to series as “Dummies”, “Rich Dad”, or “Cliffs Notes”, as well as fictional ones like the “Twilight” series. Then think about how likely you would be able to get away with writing and publishing a book called “Rich Dad’s How to Day Trade Crypto” or perhaps the much-anticipated “Twilight Cookbook”?
The idea is that, once a series title becomes identified in the public’s mind with a particular author or publisher, the possibility of consumer confusion from potential and actual competitors comes into play. Trademark infringement (and possibly dilution or blurring) and unfair competition, in other words.
Best Practices to Protect Your Planned Book Series Title
If you have or are planning a series of books for which you want to trademark a title. Then there are some general best practices which you should consider:
When choosing a series title, try not to be wed to the name you want so much. It’s hard, I know. Rather, step back and really examine the title you’ve selected. Enlist the help of a consumer focus group of family, trusted friends, or even your attorney.
You should aim for a title that is what we trademark lawyers like to classify as, at a minimum, suggestive, but preferably arbitrary, and better yet coined or fanciful. A full on discussion of what these all are is beyond the scope of this post, but there are plenty of great Internet resources that discuss them. If you’re still confused or have specific questions about your proposed name or names, then I invite you to use the contact form to the right to set up a meeting with me to discuss. The point is, you want to strenuously avoid title names that are in any way purely descriptive of your book’s contents or the series itself. I mean, you can still use such a title, just don’t expect to receive trademark registration or protection for it.
What if I’m Not Sure if I’ve Got (or Want to Write) a Series Yet?
Maybe this is just your first book and you originally intended it to be your only one but, now, after thinking writing and thinking about it more (hopefully with the help of this article!), you’re thinking, “Yeah, I do have more to say” or feel that your or your characters’ full stories can only really be encapsulated in an epic trilogy or, heck, maybe sextet or more?
Well the considerations for what makes a strong and protectable series title still apply, however don’t let the fact that you haven’t written all six (or whatever) volumes or novels discourage you. The good news is you are allowed to file for registration of your trademark to the series on what we call an “intent to use” basis.
Think of it as getting to file today based upon a sort of honor system. If your single book title today might potentially grow into a series of books tomorrow, you can file your ITU application now and, assuming that it is granted by the USPTO, you can (theoretically) be given up to three (3) years to file your “Statement of Use” with the USPTO proving your use of your series’ title in actual commerce and providing them with a real-life example of your usage (hopefully by then, multiple books in the series!) in order to secure your trademark registration and protection of your distinctive series title.
Ben Bhandhusavee is the Managing Attorney for BHANDLAW, PLLC, a startup, technology, and e-commerce law practice advising founders and management teams on company startup, corporate and technology transactions, e-commerce, as well as Internet privacy concerns. The firm serves corporate and individual clients throughout Arizona, the United States, and internationally. Our offices are conveniently located along the Camelback corridor in Phoenix’s financial district. For more information about our Trademark practice, feel free to reach out using the contact form on the right or call us at (602) 222-5542 to schedule a meeting. Connect with Ben on LinkedIn or Avvo.