No Trademark Protection In Book or Movie Titles?!?

by Scott M. Hervey
The IP Law Blog

Generally, the title to a single motion picture is not entitled to trademark protection.  This is the same for the title to single books, songs and other singular creative works.  Most non-trademark attorneys are surprised when I tell them this.  I am sure you may be scratching your head as well.  The logic behind the legal principle that the title to a single creative work cannot function as a trademark is as follows:  a title to a single creative work such as a book serves to identify only the book and not the source of that book.  Another reason trademark law generally refuses to acknowledge trademark rights in the title to a single creative work, such as a book, results from the interplay between copyright and trademark law. While trademarks endure as long as the mark is used, copyrights eventually expire. When a work falls into the public domain, others would have the right to reproduce the literary work.  However, if the title to the book enjoyed trademark protection, this would compromise the policy of public domain under copyright law because a book with a trademarked title could only be published under a different title.

Often the first question is whether the creative work in question is, in fact, a single creative work.  A single creative work is a form of work (i.e., book, movie, record) in which the content does not change. Where the work is serialized, such as a television series or the title to periodically issued publications, trademark protection would be warranted.

Does this mean that titles to great works of literature such as Gone with the Wind or the Great Gatsby are open for use by anyone?  Not necessarily.  While the USPTO may not allow the title of a single creative work to be registered, courts will grant protection where it is demonstrated that the title to the single creative work has acquired secondary meaning.  Secondary meaning (also referred to as acquired distinctiveness) happens where a mark acquires unique significance over time due to the trademark owner’s usage, where the relevant public comes to associate the trademark with the source.  Establishing acquired distinctiveness is not an easy task.

While the USPTO will categorically refuse to register the title of a single creative work on the grounds that the title fails to function as a trademark, a recent Trademark Trial and Appeals Board (TTAB) decision shows that this position could be softening.  Lining up with Federal Court doctrine, a 2016 non-precedential opinion, the TTAB concluded that the refusal to register as a trademark the title of a single work should be based on whether the title was distinctive and not due to the title failing to function as a trademark.  In this case the TTAB found that the title of a single work should be registrable if an applicant can show that the title has acquired distinctiveness.  This TTAB decision remains non-precedential and it is fairly certain that an applicant trying to register the title to a single creative work would encounter a refusal to register on the grounds that the proposed mark fails to function as a trademark.  However, if an applicant sought to register the title to a well known single creative work that has been publicly available for some time and has been read, watched, viewed, or otherwise consumed by a substantial number of persons, that applicant may have a chance (after appeal to the TTAB) of achieving registration and reversing an established USPTO doctrine.