books

Trademark Use Test Might be Met Based on Single Book Title

By John DiGiacomo

It may be surprising to some, but generally speaking, one cannot register a trademark with the US Patent and Trademark Office (“USPTO”) based on the title of a single book. In other words, a book title cannot be trademarked. This is because trademarks are designed to identify in the minds of consumers a unique commercial source for products or services. A book title is not a source-identifier. Rather, a book title is more like a description of what is in the book, not who wrote or manufactured the book. The same rule generally applies to music albums. On the other hand, a series, like the Game of Thrones books, can be trademarked because, by repetitive use, the title of the books becomes an identifier of the source of the books and what consumers can expect when they buy one of the books in the series.

This general rule may be changing, however. In a recent precedential opinion, the Trademark Trial and Appeal Board, part of the USPTO, held that a trademark MIGHT be registratible based on the title of a single book and related evidence of use-in-commerce. See DeVivo v. Ortiz, Opposition No. 91242863 (March 11, 2020).

At issue in this Opposition Proceeding was an intent-to-use application for the trademark ENGIRLNEER for three classes of goods: international class 21 (cups and mugs), class 22 (lanyards for holding badges and keys) and class 25 (hoodies, shirts and sweatshirts). Part of the process of obtaining a trademark registration is a period of publication of the proposed trademark. During that publication period, third parties have the ability to challenge the registration of a proposed trademark by filing papers with the USPTO. Such a filing is called an “Opposition.”

In this case, the application was filed by Celeste Ortiz and an Opposition was filed by Shannon DeVivo. DeVivo claimed she had priority of use. DeVivo alleged in her Opposition that, since at least 2017, she had been using the term ENGIRLNEER in commerce as part of her advocacy efforts to encourage young women to seek careers in science, technology, and engineering. The Trademark Trial and Appeal Board (“TTAB”) agreed with DeVivo and denied Ortiz’s efforts to register the trademark.

What is surprising is that the term ENGIRLNEER was used as the name of a book written by DeVivo. It was a single book, not part of a series. Normally, that would have been insufficient to allow DeVivo to claim trademark rights. However, the TTAB allowed that book title to be one piece of evidence of trademark use that established trademark rights for DeVivo. The other evidence that the TTAB identified included the following:

  • DeVivo began operating a website called www.engirlneer.org in 2017
  • The ENGIRLNEER term was featured prominently on every page of the website
  • DeVivo used the term and promoted the website in lectures and in public appearances
  • The book in question was written and published in 2018
  • The term ENGIRLNEER was used as the name of the book and the term appeared a second time on front cover of the book inside a “seal of approval” and also appeared on the back cover
  • The website was updated with brief descriptions of ENGIRLNEER characters from the book

Taken together, the TTAB held that these were sufficient to establish that DeVivo had prior use of the ENGIRLNEER trademark.

On its face, this decision may seem reasonable. But, in practical application, this decision is an exception that will vitiate the general rule. This decision provides a clear road map on how to obtain a trademark for a single book title. The steps are now easy to follow. First, start a website using the name of the book that will be published. Second, use the name of the book prominently on the website. Third, use the website and public appearances to promote an important public policy issue related to the book. Fourth, publish the book and upload character descriptions to the website. Finally, file an application for trademark registration. The same road map can be used for a single music album, a song, or a movie title.

Whether this new direction is wise or unwise if difficult to determine. It may be that this decision is simply acknowledging the reality that book publishing is very different today than it was 75 years ago. Many books are now published with an attendant cloud of marketing for ancillary products and services like toys, t-shirts and educational materials. It will be interesting to see if there is a rise in trademark applications based on single-title books.

If you have questions about creating and registering a trademark, contact the trademark lawyers at Revision Legal at 231-714-0100.

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