Trademark Registration for a Series of Creative Works
Clients who are content creators often ask if there is a way to protect the titles of their works. If copyright protection is sought, then the answer is “no,” because short phrases and titles are not copyrightable subject matter. However, if trademark protection is sought, then the answer is “maybe,” depending on how many works can be identified under your proposed mark. The following is a brief primer on some of the nuances of trademark registration for titles of creative works.
Title of a Single Creative Work=No Trademark Registration
The Trademark Manual of Examining Procedure (“TMEP”) is very clear: “the title, or a portion of a title, of a single creative work must be refused registration…unless the title has been used on a series of creative works.”[1] This rule applies whether registration is sought on either the Principal or Supplemental Register. The reason is simple, as the court in In re Cooper, 254 F.2d 611, 615-16 (C.C.P.A. 1958) explained: “a book title …identifies a specific literary work … and is not associated in the public mind with the publisher, printer or bookseller….” Single creative works are generally works in which the content does not change, whether that work is in printed, recorded, or electronic form, such as books, sound recordings, DVDs, audio CDs, and films.
Title of a Series of Works Can=Trademark Registration
If a creative work is part of a series (for example, (e.g., the work is labeled “volume 1,” “part 1,” or “book 1”), or is a type of work in which the content changes with each successive work, such as magazines, newsletters, comic books, comic strips, guide books, or printed classroom materials, then it is not considered a “single creative work.” If the trademark applicant submits evidence that the title has been used on at least two different creative works, then the title of the series may be registrable. The emphasis on “different” is notable, because existence of a series is not established when only the format of the work is changed, such as where a book is released in audio format, or the mark is used on collateral goods such as posters or t-shirts. Thus, the two works must be distinct as to content, not in how they are marketed. Another important consideration is that only actual use on two different creative works will suffice, and therefore intent-to-use (§1(b)) applications cannot be filed for series titles.[2]
Trademark Registration for a Portion of a Series Title=Tricky Business
The rule for registering the complete title of a series of creative works is straight-forward: offer evidence of use in commerce on two or more different works, and your mark can be registered. The situation gets a bit more complex when a mark is used merely as a portion of the title of a creative work. The basic rule is that “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.”[3] In these situations, the applicant must not only provide evidence of use on two or more distinct works, but also that consumers perceive the portion sought to be registered as a mark for the series.
The “Magic School Bus” case[4] is instructive on what type of evidence examiners need to see in these situations. The examiner in that case denied registration, but the TTAB (“Trademark Trial & Appeal Board”) reversed. The mark was used in titles in the series such as “THE MAGIC SCHOOL BUS AT THE WATERWORKS” and “THE MAGIC SCHOOL BUS INSIDE THE EARTH.” The court noted that the mark was repeatedly displayed prominently on book covers and separate from the other words in the titles. The court also found persuasive evidence that the applicant promoted the mark as a series title, that book reviews used the mark to refer to a series of books, and that consumers recognized the designation as indicating the source of a series of books.
As the Magic School Bus case shows, while registration for a portion of a series title is not impossible, it will require coordination between trademark counsel and your marketing team to ensure that the proper groundwork is laid to establish the kinds of evidence needed.
Trademark Registration for the Titles of Radio and Television Programs
In addition to “concrete” creative works like books, comics, and magazines, the titles of “ephemeral” creative works like a television or movie “series,” a series of live performances, or a continuing radio program may serve as marks for either entertainment services or educational services. Much like concrete creative works, the title of a single ephemeral creative work, for example the title of one episode or event presented as one program, cannot function as a service mark. The applicant must present evidence that the matter sought to be registered is more than the title of one presentation, performance, or recording.[5] To that end, specimens that show use of a service mark in relation to television programs or a movie series may consist of photographs of the video or film frame showing the mark in use in the program.
Conclusion
The evidence necessary to successfully register a trademark for a series of creative works may vary from case to case, so it is recommended that you consult with a trademark attorney at a very early stage of content production and marketing.
[1] TMEP §1202.08 “Title of a Single Creative Work.”
[2] TMEP §1202.08(c).
[3] TMEP §1202.08(d)(iii).
[4] In re Scholastic Inc., 23 U.S.P.Q.2d 1774 (1992).
[5]TMEP §1301.02(d) “Titles of Radio and Television Programs.”
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