Trademark Registration for Titles: Beyond Star WarsJuly 8, 2015
Titles of books, films, or songs do not qualify for trademark registration when used solely to identify the title a single work. The title of a single work is regarded as a “one time” use since the content does not change. Trademark registration affords protection for marks that are in continuous use in commerce. Other cases have ruled that a single title as the name of the work merely describes the work, and does not function as a trademark.
There has always been existed an exception to the rule for those who prove the title has acquired such “fame and fortune” that the public recognized the title. This is called secondary meaning, or acquired distinctiveness. Acquired distinctiveness occurs most quickly with the release of a blockbuster film such as Star Wars. In the case of a blockbuster film, the amount of publicity and advertising to the general public is almost always enough to carry the burden. Film studios learned years ago to hedge their bets and create trademark rights in ancillary goods and services. Early releases of Star Wars created trademark rights in everything from McDonald’s drink cups to toys to clothing. Of course now with the release of, Star Wars Episode VII, the title has long since transcended into a series.
However, with some planning and good legal advice, the rule can be transcended and registration secured even for those not as famous as Star Wars.
Yet, the title of a television series may be registered as a trademark, since by its very nature an episodic series involves more than one work and meet Trademark Office rules.
Guide to trademark registration for titles: Beyond Star Wars
Don’t despair. There are several ways to achieve protection for that awesome title.
Book titles: Create a workshop or seminar
Establish rights for ancillary goods or services using the title of the book for workshops based upon the book. This is a technique I use for authors such as Louise Hay and Doreen Virtue whose books have spawned workshops and licensees around the world. For example, Louise Hay’s famous book You Can Heal Your Life is a weekly radio show on the Hay House radio network, and the mark HEAL YOUR LIFE is used to by workshop leaders around the world who lead classes based upon her teachings.
In the case of Chicken Soup for the Soul, the owners were able to secure registration for audio recordings featuring music. Most recently, applications have been filed for frozen food entrees as well as dozens of offshoot titles as a series.
Title of a Song: Open a Restaurant or Sell some Clothing
Jimmy Buffett paved the way when it came to protection for his famous song “Margaritaville” which is also a chain of bars and restaurants. Remember “Louie Louie” by the Kingsmen? I successfully opposed registration of LOUIE LOUIE as a clothing store in Boston by proving the title had acquired distinctiveness, meaning the public associates the song title with the group that made it famous. As a result, the clients were also able to secure a federal trademark for the registration based upon this same evidence.
A Series of Works with the Same Title
Establishing trademark rights in a series of works requires publication of more than one different work using the same title, such as Part 1 or as in the case of Star Wars, multiple episodes. Publishing a series of works also works well with the names of musical recording artists as a way of protecting an artist’s name as a trademark for sound recordings by creating a series of works with the artist’s name or same title.
Follow the rules before filing in order to avoid likely rejection.
Use the mark on at least two different creative works. A series is not established when only the format of the work is changed, that is, the same title used on a printed version of a book and a recorded version does not establish a series. In re Arnold, 105 USPQ2d 1953, 1956 (TTAB 2013). Don’t short cut this requirement since or you could end up like the owner of LAUGH & LEARN got sued by Mattel on grounds its registration was subject to cancellation. The TTAB found that despite variations, the VHS tape and DVD submitted were the same work, not two different works and should not have been registered as a series. See Mattel Inc. v. Brainy Baby Co., 101 USPQ2d 1140, 1143 (TTAB 2011).
Use of a portion of the title of a creative work. The mere use of the same words in more than one book title is insufficient to establish the words as a mark for a series. One must show that the public perceives the portion sought to be registered as a mark for the series. For example, it has been held that where THE MAGIC SCHOOL BUS was used as a portion of the book titles in “THE MAGIC SCHOOL BUS AT THE WATERWORKS” and “THE MAGIC SCHOOL BUS INSIDE THE EARTH,” the owner qualified as a mark for a series, because the owner submitted repeated use of the designation displayed prominently on book covers. The owner also showed promotion of THE MAGIC SCHOOL BUS as a series title, that others used the designation in book reviews to refer to a series of, and that purchasers recognized the designation as indicating a series of books.
Contact our office at 310.623.3515 for help with registering your titles.