People often ask me how they can protect the name of their individual work, whether it be a book, song, software composition, or anything else. Protecting names can be challenging. Names, titles, and short phrases are not subject to copyright protection. That leaves us with trademark law. Can the name of an individual work be protected as a trademark?
This was the question before the US Patent and Trademark Office’s Trademark Trial and Appeal Board in the matter of ROCK YOUR BODY. The applicant, King Productions, Inc., had applied to register ROCK YOUR BODY as a trademark for DVDs (class 009) and books (class 016) in the field of “dance, exercise and fitness.” Trademarks have to be in use before they can be registered. As evidence of use, King Productions provided a screen shot showing one book and one DVD (the image can be seen above.) The USPTO initially rejected the application on the grounds that there was only one demonstrated use of the mark in each class: one DVD and one book.
King Productions appealed the decision to the Trademark Trial and Appeal Board (TTAB.) The TTAB began its analysis as follows:
It is well-established that the title of a single work, such as a book, is not considered a trademark, and therefore is unregistrable…In essence, the title of a work is treated as the name of the work, and therefore as describing the work.
So the TTAB is saying that “title” is a synonym for “name,” which isn’t very helpful. The last clause – specifically, the word “describing” – is important, though, and we’ll see why shortly.
The TTAB went on to state that…
…it is equally settled law that the name of a series of works can be registered as a trademark even though the title of a single work cannot. “The name for a series, at least while it is still being published, has a trademark function in indicating that each book of the series comes from the same source as the others.” (Quoting a previous case.)
So far, nothing new here. Titles of individual works can’t be protected as trademarks, titles of series can. But here comes the good stuff:
We have undertaken a thorough review of the case law and the underlying principles for refusing registration of titles, and have reached the conclusion that the refusal to register a title of a single work should be based on Section 2(e)(1) rather than on Sections 1, 2 and 45.
OK, that doesn’t seem like a particularly groundbreaking sentence. But what the TTAB is saying, and what the decision goes on to state, is that it’s not that titles of individual works can’t serve as trademarks, but, rather, that the…
…title of a single work is…the ultimate in descriptiveness…
There’s that word again. My regular readers may begin to spot the thread here. Terms that are descriptive are generally considered weak from a trademark perspective. But if a descriptive term has “acquired distinctiveness,” it can be protected just like any other trademark.
So, if the title of your single work has become so distinctive that the consuming public will assume you to be the source of the “goods,” then it may be entitled to trademark protection.
That’s great news for King Productions, right? Not so much:
We therefore consider whether ROCK YOUR BODY has acquired distinctiveness as a trademark and thus has become, in the view of relevant consumers, a source identifier and not just a title of Applicant’s DVD and book.
Other than the specimen webpage, we simply have no evidence regarding sales or advertising, and no evidence from which we could conclude that ROCK YOUR BODY has acquired distinctiveness such that consumers would recognize it as a trademark for the book and DVD, rather than just as the title thereof.
Oh well. At least they set a legal precedent. Well, actually, they didn’t even do that, because this ruling was designated “non-precedential” by the TTAB. They’re proceeding with caution here, but it wouldn’t be surprising if this began a trend.
I wouldn’t necessarily assume that, from this moment forth, the title of your individual book, or similar type of work, can be registered as a trademark. But we seem to be moving in that direction.