Steve Gillen (photo right) is a partner in the intellectual property firm of Wood, Herron & Evans L.L.P. and has focused his practice on publishing and media matters for 30 years. To reach him, email firstname.lastname@example.org or call 513-241-2324.
In the early 1900s, Eleanor Porter wrote the first of a series of inspiring books for children featuring a character named Pollyanna—a young girl who overcame childhood adversity and, through her infectious optimism, raised the spirits and aspirations of all around her. Published by The Page Company, each of the books in the series incorporated “Pollyanna” in the title: Pollyanna was followed Pollyanna Grows Up and a dozen others in what came to be known as the Pollyanna series.
Foreseeing commercial success, The Page Company sought to stake out nationwide protection for Pollyanna by applying for a federal trademark registration for use of “Pollyanna” as the trademark for a series of books.
They were, ironically, overly optimistic. Whatever Pollyanna brought to the lives of the characters around her, she spelled nothing but trouble for protection of book titles.
The Page Company’s application for registration was refused by the trademark examiner on the ground that Pollyanna was the name of a particular book and therefore merely descriptive of that particular book (use of the title being the only way by which the public could ask for it). According to the examiner, since it was the name of a product and not an identifier of the source of that product, Pollyanna was not capable of serving as a trademark.
In a later case concerning the issue of book titles as trademarks, a federal court explained that the title of a book is to the universe of published books as chicken soup is to food—simply a category and not a brand. Now that may make perfect sense if the title of the book is Principles of Economics — the first publisher to so title its textbook should not be able to preempt the field. It makes less sense for a book, and certainly for a series, called Pollyanna.
But like it or not, this prejudice against trademark protection for single book titles has persisted now for nearly a century, and it is firmly ensconced in Trademark Office policy and practice. The formal position of the Office is simply that book titles must be refused registration—with one exception discussed below.
So we should just accept this broad-brush treatment as an unfortunate fact of life and move on, right?
Not so fast, Pollyanna! Although you cannot obtain a federal trademark registration for your single book title, that doesn’t mean you should forget about taking advantage of trademark law. There is still a potential upside, and also a significant downside.
What a Trademark Could Do for You
The one exception recognized by the Trademark Office is that the title of a series of books (as distinct from the title of a single book) can serve as a trademark.
To understand why it matters whether trademark protection is available for titles (series or otherwise), you first need to appreciate what a trademark is and how it differs from a copyright.
A trademark’s key role is to serve as a distinctive identifier of source and as a guarantee of a consistent level of quality. Where books are concerned, a trademark can consist of any word, name, phrase, logo, symbol, or combination thereof that is used on the books to identify and distinguish a particular publisher’s books from those of others or to indicate the source of the books.
In the United States, trademark rights are established by use of the mark in the stream of commerce and so belong to the user. For books, that would be the publisher. As an owner of trademark rights, the publisher has the right to prevent others from using marks that are identical or similar enough so that their use would create a likelihood of confusion in the relevant market about source, affiliation, or endorsement.
Through the use of a mark to distinguish its books, a publisher can keep its competitors at arm’s length and prevent them from getting a free ride on its brands and its advertising.
But there is an important countervailing interest that constrains the protection we provide for trademarks—the right of the public (including competitors) to continue to use words in the English language in their ordinary English-language sense. So generic terms cannot serve as trademarks—“book” can’t be a trademark for books; and trademark protection for descriptive terms is sharply limited. This is the policy that causes trouble for book titles.
Contrasts with Copyrights
But, you ask, doesn’t copyright law provide protection for books? The answer is yes . . . and no.
In contrast to trademark rights, a copyright is a set of exclusive rights in a work of original expression, and those rights belong, at least initially, to the author of that work. Here is one important distinction—copyright rights vest by default in the author; trademark rights vest in the party controlling use, commonly the publisher.
Copyrights attach to works of original expression or authorship. The bar is low, but the Copyright Office and the courts have long maintained that titles and short phrases do not surmount it. So here is another important distinction. Copyright law provides no protection for individual words or short phrases, and the copyrights in a book do not protect its title; trademark law does provide protection for words and phrases, provided that they serve to identify the source.
Included among the set of exclusive rights copyrights comprise are the exclusive right to copy the work and the exclusive right to prepare adaptations or derivatives. Copyright is not meant to protect against market confusion, only to keep others from conscripting the protected authorship. So a copyrighted work cannot be infringed except by someone who had access to the original, because it is not just similarity that is precluded; it is similarity that results from copying.
This is another important distinction. A copyright infringement claim requires proof of access and copying; trademark infringement is established through likelihood of confusion, irrespective of copying.
Finally, the term of copyright protection is measured by the life of the author plus 70 years—a very long time. Trademark protection lasts as long as the mark continues to be used in the stream of commerce as a source identifier—potentially forever.
What Can Be Trademarked
So trademark rights have at least the potential to provide a different and additional layer of protection for publishers who are able to take advantage of them (along with providing another asset for the publisher’s intellectual property portfolio).
But given the Trademark Office’s rule barring registration of single titles, how can this help you? The answer is, with imprints and series titles.
Publishers have long used imprints to distinguish and brand segments of their lists. As a source identifier for books of a particular description from a single source, an imprint is clearly distinct from the titles of the books published under it and so does not suffer the trademark fate of individual book titles when it comes to registration of the publisher’s rights.
Series titles can also be registered, as noted above. Where the series title is distinct from the titles of the books in the series, the process is analogous to that for imprints — Nancy Drew and The Hardy Boys are two iconic examples. (It appears, however, that Grosset & Dunlap failed to take advantage of Nancy Drew as a mark for its valuable series because its author team later bolted for Simon & Schuster with their series title in tow.)
Sometimes, however, the series title is incorporated in the titles for the individual works. The [Fill-in-the-blank] for Dummies series is a well- known example. Where this is the case, the Trademark Office has established three requirements.
The portion of the title that constitutes the claimed mark:
- must create a separate commercial impression apart from the rest of the title—it has to be set apart and distinguished by, for example, size, type font, color, separation through the use of space or graphic elements
- must be used on more than one work
- must be promoted or recognized as a mark for a series—mere use of the same words is insufficient; there must be evidence of promotion of the mark as a mark for the series or evidence that purchasers or reviewers recognize the designation
With respect to the second requirement—that the mark be used on more than one work—the Trademark Office has said that where the content does not change from one edition to the other, the editions will be viewed together as a single creative work. So none of the following variations/combinations would constitute a series:
Nor would a single work that has been serialized or published in parts be considered a series (although periodical titles are registered, even though they are sometimes referred to as “serial” works, because the content changes from one issue to the next).
Is This Worth the Trouble and Expense?
It can cost up to a few thousand dollars and take a year or two to clear and register a trademark. Why go to all that trouble? Consider these benefits.
Trademarks are forever as long as they are continuously used and maintained.
Trademark rights vest in the publisher (in the absence of a contrary agreement) and are not ordinarily subject to a reversion, while copyrights vest initially and automatically in the author, not the publisher. And even when copyrights are transferred to the publisher, the publisher’s rights are subject to reversion (if the contract is breached by the publisher) and subject to a nonwaivable statutory right of termination during a five-year window 35 years after the grant (more on this in another article).
Unlike copyright infringement, which requires proof of copying, trademark infringement requires only likelihood of confusion. Moreover, since a trademark registration carries with it a presumption of distinctiveness, the plaintiff who has a registration is relieved of the burden of proving distinctiveness in an infringement action.
In cases where the publisher’s noncompete rights, other contract rights, and copyrights are insufficient to keep its author from publishing elsewhere under his/her own name, a trademark may permit the publisher to maintain its titles as distinctive in the marketplace anyway.
And finally, a portfolio of trademark registrations adds to a publisher’s intellectual property assets and can add value to the business and facilitate deals with lenders, investors, and purchasers.
Beware of Being an Infringer
Even if you decide not to pursue development and registration of distinctive marks for an imprint or book series, you cannot afford to ignore the subject of trademarks in connection with your list. Ironically, although a single book title can’t be registered as a trademark, it can infringe other marks—you may not be able to protect it, but you can be forced to stop using it.
In 1978, McGraw-Hill was enjoined from publishing a book that employed the trademark Scrabble in its title. In 1996, Simon & Schuster was able to bar Dove from publishing a work under the title The Children’s Audio Book of Virtues by successfully claiming that William Bennett’s The Book of Virtues> had acquired secondary meaning and thus permitted S&S to claim unfair competition under the Lanham Act. Ty, Inc., has challenged the use of its trademark Beanie Babies in book titles. The owners of the marks eBay, Cliff’s Notes, Twin Peaks, and many others have done likewise.
Essentially, the test is whether a publisher makes unauthorized use of another’s mark in a title or on a book cover in a way that explicitly misleads or creates a strong likelihood of confusion about whether the mark owner has sponsored, approved, or endorsed the book or is affiliated with the book’s publisher.
So while it might be acceptable to use the word eBay in the title of an unsanctioned guide to using the eBay brand online auction services (how else could the publisher let the reader know what the book is about?), it is not okay to use eBay’s distinctive stylized form as the most prominent feature on the cover in a way that invites readers to infer that the book has been published or approved by eBay.
When in doubt, talk with your lawyer about having a qualified professional search and clear your book titles before it is too late to change them. You don’t want to find out, after thousands of copies have been printed, that you have a problem with a title that appears on each cover, the title page, the running head of every recto page, and all your promotional materials.
Pollyanna sold a lot of books, but don’t be a Pollyanna when it comes to your titles and trademarks.
Steve Gillen is a partner in the intellectual property firm of Wood, Herron & Evans L.L.P. and has focused his practice on publishing and media matters for 30 years. To reach him, email email@example.com or call 513-241-2324. He gratefully acknowledges the invaluable insights and suggestions contributed for this article by his trademark partner, Lori Krafte, but any errors are his alone.