Re: title protection?

On Sun, May 21, 2000, Ransford Pyle <pyle[_at_]mail.ucf.edu> wrote:
>
> On 05/19/2000, Marty Hayes <9ball[_at_]hostsite.net> wrote:
> >
> > On Thu, 18 May 2000, Robert Cumbow <rcumbow[_at_]grahamdunn.com> wrote:
> > >
> > > On Wed, May 17, 2000, Eric Eldred <eldred[_at_]eldritchpress.org> wrote:
> > > >
> > > > Yes, it's normal now for corporations to trademark book titles.
> > > > Now, what happens when they go out of copyright term? Can
> > > > another company reprint the work without infringing on the
> > > > trademark? I wish I could see that clearly.
> > > >
> > > > Also, IDG as noted in my first postings is aggressively pursuing
> > > > trademark infringement cases against non-commercial publishers
> > > > such as web pages, not permitted by trademark law, as if it were
> > > > copyright infringement, which does not see the distinction.
> > > >
> > > > That's all my point, and its relevance to this mailing list.
> > >
> > > Still not right. You emphatically CANNOT "trademark" a book title.
> > > You CAN register a trademark that is used to identify a SERIES of
> > > books. That trademark may or may not appear in the titles of the
> > > books, but it must appear on ALL of the books -- it cannot be the
> > > title of a single work.
> >
> > Robert makes an important distinction here; it is the "serial" nature
> > that provides the platform for the suggested trademark. Well said.
>
> Pardon me if I'm dense here, but I'd like a clarification.
>
> You 'emphatically cannot trademark a book title.' Does that you
> cannot trademark the words that compose a title, or does it also
> include the unique graphic representation of the title? If so, is
> that because the book is not a product which can come to be known
> through its trademark? To get concrete, I think of the Star Wars
> graphic, which has become widely known as identifying the multitude
> of products related to the movie. If the graphic appeared on the
> original book, and then on the movie, and then on the products
> related to the story, and then on the series of Star Wars movies,
> at what point can a trademark be registered?

Without going into too much detail (I teach trademark law and it's normally a 2-credit course stretching over a 14-week term), trademarks are registered by classes of goods. A phrase that is the tile of a single book (e.g. SILENCE OF THE LAMBS, let's say) cannot be registered as a trademark for "books." That same phrase, if used with other merchandise, may be registrable as a trademark for merchandise in that particular line (say, SILENCE OF THE LAMBS hockey masks). The title of a single book cannot be registered as a trademark because it does not function as a trademark. To be a trademark, a word, phrase or design has to distinguish goods as to their source; it can't merely identify the goods themselves. Thus COCA-COLA is a trademark because it tells us not what the product is (a cola-flavored soft drink) but where it comes from (the Coca-Cola Company). SILENCE OF THE LAMBS as a book title is not a trademark because it does not tell us where the book comes from, it tells us what book it is. The only trademark on the book cover would be the name and or colophon of the publisher.

However, once two or more books are produced by the same entity using the same term or phrase in the title, that term or phrase may take on trademark significance. Thus VISUAL BASIC 6 FOR DUMMIES doesn't simply tell me what book it is, it tells me where it comes from (the same people who produced all the other FOR DUMMIES books). Thus I, a consumer, begin to perceive the phrase FOR DUMMIES not merely as part of the title of the book but as an indicator of the source of the book. At this point FOR DUMMIES takes on trademark significance and is registrable as a trademark.

STAR WARS is, of course, used on a very large series of books (and lots of other merchandise as well), and so is clearly a trademark, and registrable as such. It was the title of a single work for only a few short weeks of 1977.

I hope this helps.

> Robert C. Cumbow
> Graham & Dunn, P.C.
> 1420 Fifth Avenue, 33rd Floor
> Seattle, Washington 98101-2390
> Phone: 206-340-9619
> Fax: 206-340-9599
> E-mail: rcumbow[_at_]grahamdunn.com
> Website: http://www.grahamdunn.com/
>

		Big law firm experience
	without the big law firm experience.SM

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