Re: title protection?

On Tue, May 23, 2000,Stephen Fishman <sfish55[_at_]yahoo.com> wrote:
>
> On Mon, 22 May 2000, Robert Cumbow <rcumbow[_at_]grahamdunn.com> wrote:
> >
> > 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.
>
> Although the PTO won't register the title for a single work,
> can't such a title still receive trademark protection if it
> acquires secondary meaning?

Only if it acquires secondary meaning with respect to goods or services within a particular class. If it remains only the title of a single work it cannot be registered as a trademark.

The objection to registering the title of a single work as a trademark is not that it is merely descriptive--if it were, then secondary meaning would be sufficient to make it registrable. The objection is that the title of a work doesn't function AS a trademark. It identifies the work, not its source.

> 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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