How to Trademark a Book Title
How to Trademark a Book Title is part of our How to Trademark series.
For many authors, their writing is the most valuable asset they own. Literary works are protected by copyright, whereas the title of a book can be protected with a trademark.
Should I Trademark my Book Title?
It is important to understand that not all book titles can be trademarked. In fact, most book titles cannot be trademarked. Trademarks are designed to identify the source of goods and services. Most book titles do not serve this function. For example: consider a famous work of literature, like “Gone with the Wind”. While many of us remember the book or that it was written by Margaret Mitchell, we don’t identify book’s title as a source of goods. Therefore it is not a trademark.
While the law does not allow for a trademark on an individual book title, an author can trademark a series of books. This is because they serve as an identifiable brand. Common examples include the “For Dummies” series, “Chicken Soup for the Soul”, and the “Hardy Boys Adventures” series.
While a single book title cannot be trademarked, it is important for authors to protect the text and graphics of the book itself with a copyright. An experienced intellectual property attorney can help you determine whether a copyright, trademark or patent is the appropriate tool for legal protection in your particular situation.
What if I Don’t Have a Series of Books?
If you don’t intend to create a series of books, you can still protect the name of the book for related products or services. For example, while Class 16 covers a series of books, a strong alternative and maybe an even more valuable class is educational services in Class 41. A website offering educational or entertainment services can qualify as use in Class 41. Apparel in Class 25 or toys in Class 28 are other options. You can review the list of trademark classes for any other products or services that you are selling or intend to sell under the name of the book.
How to File a Trademark Application for a Book Title
If you have a series of books, here are the steps you will need to follow to register and protect the title:
1. Select the name of your series
In addition to your artistic and literary considerations, there are also legal considerations that must be taken into account when selecting a series title to trademark. First, the name cannot already be a registered trademark. It also cannot be close enough to an existing trademark such that the two are likely to be confused. This is why it is important to hire a trademark lawyer to conduct a the search and analyze the results. While hiring an attorney to do this search is not required, it will substantially reduce the likelihood of your trademark application being rejected.
Second, the title must be distinctive. This means it distinguishes your book series from other authors’ series. Trademark law categorizes trademarks into five categories of distinctiveness. In descending order of distinctiveness, they are:
Fanciful and Arbitrary trademarks are given the most protection because they are the most distinctive. Examples include “Exxon” or “Apple”. Because they bear no relationship to the underlying product, they are a distinct trademark for the goods. Generic words, such as “computer,” cannot be protected under trademark law. This is because generic words cannot be used to distinguish one product from another. The more distinctive your chosen trademark, the more protection it will be given under federal trademark law.
2. Do a Trademark Search
Trademarks serve to distinguish your brand from other literary brands. If your title is the same as another registered trademark, it will not distinguish your brand. Series titles that are confusingly similar to existing trademarked titles also cannot be used, because the confusion between the two prevents trademark rights from taking hold. Because of this, the USPTO requires its Examining Attorneys to conduct a thorough search of all existing trademarks during the application process. Your application can be rejected if there are any prior filed trademarks that are the same or confusingly similar to yours.
The Trademark Electronic Search System (TESS) is a database maintained by the USPTO. It is an important repository of information about existing trademarks. Unfortunately, many trademark applicants rely on their own TESS search and interpret their own results. Those who are not experienced at using TESS may not be able to find all potential conflicts with their proposed trademarks. It is also important to know how to interpret the results you find. While you might not think a trademark is too similar to yours, an Examining Attorney may disagree. Similar mis-spellings or sounds can cause your application to be denied on likelihood of confusion grounds. And beyond these problems, TESS is not the only place where trademarks could be found. Due to common law trademark rights, any prior use even if not registered can prevent you from owning a chosen trademark. As such, an internet search and other similar searches should also be done.
3. File the Application with the U.S. Patent and Trademark Office
Filing the application is the next step. The information you provide must prove that you are legally entitled to the trademark you seek. Errors on the application can result in it being denied without a refund of your application fee. Applicants who live outside the United States are required to hire a U.S. trademark attorney to prepare their trademark applications. United States residents are not required to do so, but the U.S. Trademark Office encourages them to do so. An experienced trademark lawyer can save you time and money in the application process while also increasing the chances that you will be able to successfully register your trademark.
4. Track the progress of your application
Once your application is received by the USPTO, it will be assigned a serial number. This allows you to track your application progress through the Trademark Status and Document Retrieval (TSDR) system. While the application is pending you might need to supply supplemental information or documentation.
Once your application is sent to an Examining Attorney for review, he or she will check the application for errors and legal problems, and also search for conflicting trademarks. If the Examining Attorney finds any errors, you will have six months to make any available corrections. Applications that are not corrected within six months will be abandoned. By tracking your application in the TSDR system, you can learn of any problems and be sure a timely response is filed.
Like many legal claims, a trademark requires its owner to provide notice to other parties who might have a legal interest in the matter. The USPTO accomplishes this through its weekly publication of the Official Gazette. Once the Examining Attorney approves your application, your trademark will be approved for publication in the Official Gazette. When published for opposition it allows anyone with legal grounds for objecting to your trademark to file an opposition with the Trademark Trial and Appeal Board.
5. Achieve Registration
Once your trademark has been successfully published without objection and you have proven your use of the trademark, your trademark can be officially registered with the USPTO. The Examining Attorney will advise you in writing if there are any further objections, errors, or legal obstacles to your registration. If so, you will again have the opportunity to correct them. If not, your book title will be registered as a trademark, and you will have legal protection to use this title to distinguish your literary brand.
For assistance with a trademark application for a book title, please contact us today.