According to the U.S. Patent and Trademark Office's Trademark Manual of Examining Procedure, the title, or a portion of a title, of a single creative work is not registrable as a trademark, but the title of a series of creative works is. That's why The Hardy Boys, the title of one of the most popular juvenile book series of all time, is registered, but the title of the Herman Melville novel Moby Dick is not.

But rulings in this vein can be nuanced. For example, in a precedential ruling at the Trademark Trial and Appeal Board in Independent Media Corporation (PVT.) Ltd. v. BOL Enterprise (PVT.) Ltd., Independent Media claimed prior use of the mark BOL, but BOL Enterprise opposed on grounds that the former's claim was based only on the title of a Pakistani motion picture. Independent Media then argued Bol Enterprise had perpetrated fraud on the USPTO, an assertion that failed to convince the Board.

Shortly thereafter came the TTAB's non-precedential ruling in In re Jonathan Roche Fitness Ventures LLC, Serial No. 85981686 (April 15, 2016), in which a divided panel affirmed an examiner's refusal to register the mark No Excuses Diet for "books in the field of food in health and wellness," because No Excuses Diet is merely the title of a single creative work.

Writing for majority, Judge Kuczma observed that the title of a single book "describes the book," and "is not associated in the public mind with the publisher, printer or bookseller"—that is, a book's title does not identify its source. He went on to explain that if the title identifies a series of works, it performs as a trademark—a source identifier—and may be registered.

The panel reviewed additional evidence submitted by Roche Fitness, comprising advertising for materials in its book, including workouts, articles, and other items available at the company's website or on YouTube. That use, the majority found, did not constitute use of the No Excuses Diet mark as a trademark for books. Given the identification of goods—i.e., books—the Board's majority affirmed the refusal to register the mark.

Jude Adlin dissented, arguing he would have found the No Excuses Diet mark was properly associated in the public's mind with the book's source. He felt it was not required under the Lanham Act that the creative works in an alleged series all be in the same format, or that an applied-for mark be used across multiple works without any variation.

Judge Adlin felt that even though Roche Fitness offered only one book under the No Excuses Diet mark, that was not the applicant's only use of the mark or closely related marks. According to Adlin, the majority's conception of "books," "titles," and "series" was too narrow, and the ancillary materials referenced in the book, in combination, formed a "system or process to 'crank up your energy fitness and weight loss.'" The evidence, according to Adlin, supported a finding that the No Excuses mark was in fact the applicant's "primary mark" (Diet being disclaimed).

Judge Adlin concluded that as a result of the applicant's "association creating activities" under the marks No Excuses and The No Excuses Diet, the marks successfully identified to consumers a set of literary and other works on the subjects of nutrition, health, and wellness, and deserved trademark registration.

The cynical response to this case would be to wonder whether denying trademark registrations to book titles is really an artificial contrivance by the USPTO to keep it from having to review a slew of trademark applications for the titles of a single creative work. Yet a compelling reason why the title of a book cannot be a trademark stems from copyright law.

A trademark can endure for as long as a mark is used, which in the case of some commercial enterprises is a significant and accruing value. Coca-Cola comes to mind. A copyright has a limited term, and once protection ends a work falls into the public domain. (That term is lengthy. While Moby Dick is in the public domain, having been published before 1923, Harry Potter is under copyright for the life of its author J. K. Rowling, plus 70 years after that.)

Another reason the single book rule makes sense is that trademarks are meant to function as identifiers of the source of goods and services. That's why trademarking a book is treated differently from trademarking a loaf of bread. A single book is always the same; future copies of it have the same text, characters, themes, etc. You cannot know if future copies of a loaf of bread will have the same quality ingredients as the original.

This rationale seems flawed. The USPTO does not refuse to register a loaf of bread because it only identifies one good. It would seem that a book title either identifies its source or not.

Given the current rules, owners of the titles of single creative works who aspire to trademark registration might overcome potential refusal at the USPTO by developing that work into a series—though arguably that entails a good deal more work by authors than perhaps they'd be interested in. Alternatively, they could apply for a trademark for related goods, such as app for providing additional information, news, or commentary regarding the book. Whatever their course, given the ruling in Roche and the argument in dissent, the book is clearly not closed on registering a mark for a single "work's" title.

Reprinted with permission from the September 25, 2017 edition of Inside Counsel© 2017 ALM Media Properties, LLC. All rights reserved. Further duplication without permission is prohibited, contact 877-257-3382 or reprints@alm.com.

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