Copylaw: Book Publishing Attorney | Literary Lawyer: How to Select a Book Title and Not Get Sued

Choosing the perfect book title is not just a marketing decision, it is a legal determination. It should provoke interest and curiosity in the book (or the product or service you sell on the back end) and not a lawsuit by an aggrieved trademark owner or removal of your listing via Amazon's report a violation and takedown tool.

A trademark screening search will alert you if a book, podcast, or title of another creative work is likely to encounter legal problems.

Why Do a Trademark Screening Search?

A screening search reduces the potential for trademark infringement claims. Before finalizing your title selection, it's important to do a preliminary search to determine if any similar or identical marks are used for related goods or services. While it is true that titles are not protected by copyright, if potential purchasers are likely to be confused about the source or sponsorship of a book, it could result in a trademark infringement or unfair competition claim.

Making a Screening Search Part of the Process is Easy

A proper investigation includes using the Google search engine and the Trademark Office's 24/7 online database. These are invaluable tools for identifying obvious conflicts – identical or similar marks for related goods or services. Referred to by trademark attorneys as TESS, the free Trademark Electronic Search System database is located at http://tmsearch.uspto.gov.

When doing a screening search, the central question is whether there is a confusing similarity to someone else's mark. In evaluating the likelihood of confusion, the three key considerations are:

Has the mark been registered?
How similar are the marks?
Are the goods or services related?

Similarities in sight, sound, and meaning, and the relatedness of the senior user's goods and services are the key vectors in any trademark infringement analysis.

If the title you’ve selected is already registered by someone for related goods or services, absent a valid First Amendment defense (discussed later), soldier on and select another title. Put another way, if they cared enough to register their mark, there’s a good chance they are prepared to fight to protect it.

CAUTION. Trademark rights are obtained through use, not registration. That means you should also search the internet for marks that may raise legal issues. If seeking to register a trademark, a comprehensive full search and attorney clearance opinion is recommended.

Free Expression and Fair Use Exceptions

Not every use of a trademark (or similar title) without permission is an infringement. There are many legitimate reasons to use a particular word or phrase as the title of a work that doesn’t have anything to do with trading on another party's goodwill, fame, or reputation. For example, words that merely describe the contents of a work are, at best, weak trademarks and receive no protection without proof that consumers associate them with a particular source. By source, the Trademark Act refers to the source of the physical or virtual goods rather than the author.

No matter how clever, single titles are not entitled to trademark registration. However, if a single title attains secondary meaning -- a level of commercial magnetism associated with a runaway bestseller -- it can still be protected absent registration.

Generic titles (100 Best Science Fiction Movies) standing alone are not entitled to trademark protection.

In analyzing whether a title infringes a trademark or another title, courts balance the right to speak freely against the trademark owner's rights. While using a disclaimer (the subject of a future post) is not a magic bullet, a prominent disclaimer can help reduce the potential for consumer confusion.

For a deeper dive on title clearance, click here.

A Warning Before You Start Your Search

Given the subjective nature of of trademark law, deciding on your title depends on your risk tolerance, informed by search quality and legal analysis. When uncertain, it's wise to seek guidance from a trademark attorney. They can assess if your title is suitable for registration, and assist you in navigating the trademark registration maze.

How to Trademark a Book Title

A trademark registration gives you the exclusive right to use a trademark. Once you register a trademark, you can stop others from using both identical and confusingly similar marks for related goods or services.

However, a single book title cannot be registered as a trademark unless it is used for a series of works (e.g., Harry Potter and the Philosopher's Stone, Harry Potter and the Chamber of Secrets). In other words, a trademark can only be tied to a series of literary works, not a single title.

The rationale for the “single title rule” is that once a book enters the public domain, it should remain there, and the public should have the right to identify it by its original title.

So how do you protect the first title in what you hope will be the next Hunger Games trilogy or Harry Potter series of fantasy novels?

How Do I Protect the First Book in a Series?

The are to two ways to acquire trademark rights. The first is based on being the first to use the mark in connection with the sale or marketing of specific goods or services. The second is to be the first to file an Intent to Use application with the Patent and Trademark Office. After the PTO trademark examiner approves your Intent to Use application, you will have six months within which to file a Statement of Use. If you need more time to publish the second book in the series, you can file for multiple six-month extensions. By filing an Intent to Use application, you are staking out a claim to the title. Assuming your application meets the minimum filing requirements when the second book in the series is published and a Statement of Use is filed, the Trademark Office will re-evaluate the application. The key benefit of filing on this basis is that an Intent to Use application will temporarily block other later filed trademark applications for identical (or confusingly similar) marks for related goods.

When you obtain the registration for your title, the date you filed the Intent to Use application will serve as the date of first use. That gives you priority over those who began using the trademark after you filed.

A slightly different process is involved if you have an established book series. In either instance, you will need to publish book two in the series to obtain a federal registration.

If You Can't Protect a Single Title, Protect the Business or Website

While you can't register a single book title, you may be able to register a trademark for related goods or services, e.g., your business or a companion website. If consumers would reasonably assume that the owner of a product or service gave permission to publish a book with a confusingly similar title, but they didn’t, that deception may rise to the level of unfair competition (discussed later).

Tip. Remember, trademark infringement is not simply a book-to-book, blog-to-blog, or app-to-app comparison. While conventional wisdom says you can't compare apples to oranges, they are both grown in orchards, are considered a fruit and are sold in the same section of your local supermarket. That makes them related for purposes of trademark law. If you don't have a book series, register the mark for the business behind the book, the website, or a related product or service.

Unfair Competition

Unfair competition law is commonly used as a cudgel to go after bad actors who try to deceive consumers into falsely believing their goods (including books, blogs, and businesses) have been approved or endorsed by others. Even where a trademark has not been registered, it’s a violation of unfair competition law – and commercial morality -- to misrepresent the source or approval of a creative work.

Did you know the trademark for an existing business could prevent you from using a book title?

Suppose you are the owner of a successful business. Under those circumstances, if consumers saw an unauthorized book with a confusingly similar title to your company and believed it was endorsed by you, that deceitful practice would fall under unfair competition law.

Case & Comment. In a case involving the Ralph Lauren Polo brand, a court permanently stopped the unauthorized use of the name Polo for a lifestyle magazine. In granting the injunction, the court rationalized that the magazine and Ralph Lauren’s Polo brand were associated with fashion, elegance, and affluent lifestyles in the public's mind. While the First Amendment will allow you to write a book about Ralph Lauren and the fashion brand’s cultural significance, you cannot ride on Ralph Lauren’s designer coattails to boost your business by falsely implying an association when none exists.

For a deeper dive on trademark fair use and title clearance, click here.

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TITLE CLEARANCE CHECKLIST

1. Avoid titles that would confuse people into mistakenly believing that your work is associated with, endorsed by, or licensed for use by another party.

2. Likelihood of confusion (the test for trademark infringement) isn’t just about the confusion between similar literary titles. Protectable titles in one media (movies, video games, podcasts) may be protected in different media (books, sound recordings) if there is a likelihood of confusion.

3. In evaluating search results, consider the following:

. Does the word or phrase have widespread public recognition?

. How similar is the word or phrase to your proposed title?

. Is the word or phrase used for related goods or services?

4. Important! Marks only need to be confusingly similar, not exactly alike. Don’t ignore descriptive marks that have become associated with a single source over time.

5. Protectable titles in one media may be protected in different media if they are marketed through the same trade channels and sold to the same class of consumers or if it’s reasonable for consumers to believe the trademark owner approved the use of the title.

6. Descriptive terms that have not achieved public recognition due to widespread media attention and strong sales are not protected under trademark law and cannot serve as the basis of an infringement claim.

7. Not just words, but the look and feel of a book jacket can infringe an existing trademark. Courts look at the total image of the book cover (format, lettering, distinctive words, illustrations, colors used, and layout) to ascertain if there’s a likelihood of confusion.

8. The mere use of a trademark in a title is not an infringement if the title is (a) artistically relevant to the underlying work and (b) no explicit suggestion is made that the trademark owner endorsed, sponsored, or approved the work. See #7, #14

9. A single book or other creative work title is not entitled to trademark registration unless used for a series of creative works. See #10

10. While a single title for a creative work (e.g., book, movie, or song) cannot be registered as a trademark if it becomes broadly popular and associated with a single source, especially when it starts generating spin-offs and merchandise licensing tie-ins, it may be protected under unfair competition law.

11. It is fair use if you use a trademark in its descriptive sense to truthfully describe the trademark owner’s goods or services, provided there's no suggestion that the trademark owner endorsed, sponsored, or approved the work.

12. Search for registered trademarks using the Trademark Office’s free TESS database. Next, search your favorite search engine for common law (unregistered) marks for related goods and services. If you intend to register your title after you've ruled out obvious conflicts, obtaining a full search and registrability opinion is highly recommended.

13. While title clearance and trademark searches are similar, it is best to work with a trademark attorney to register a series title or the name of a business. They can tell you if the mark is registrable and improve the chances of registration.

14. WHEN IN DOUBT, CONTACT A TRADEMARK ATTORNEY.

For More Information:

Contract attorney Lloyd Jassin at jassin@copylaw.org or at (212) 354-4442. His offices are in the heart of Times Square, in The Paramount Bldg., at 1501 Broadway, FL 12, NYC, 10036. Follow the Law Firm and Lloyd on Twitter at http://www.twitter.com/lloydjassin

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Trademark Law and Book Titles