Detroit Trademark Attorneys: Trademark Protection Available for Goods or Services In Use In Commerce
A film or book title cannot be registered as a trademark with the USPTO unless it is "serialized" or develops into a continuing television series, or series of books.
Unlike copyright or patent protection, trademark protection is not extended to the creators of works in order to protect the creators' artistic or scientific creative product.
Trademark protection is extended to a name, logo, or advertising phrase in order to protect consumers' right to understand the source and quality of a product or service that they purchase or consider purchasing in interstate commerce.
That being the case, the underlying implication is that a product or service for which a trademark is being registered must be in use in commerce.
On an ongoing basis.
It cannot be something that WAS in commerce in the past tense.
Film or Book Title Trademark Application: Title of a Single Work Refusals
If you do file a trademark application for a single film (or book, etc.), it is probable that the Examining Attorney assigned to review your application will issue a "Title of a Single Work" refusal.
What is this?
This is a substantive "office action" refusal of your trademark registration application on the basis that it is not "in commerce."
Further, the USPTO generally considers such single-use titles to be "merely descriptive." This is another basis for trademark refusals. The idea behind which is that a trademark must be unique enough to identify the source of the film or book.
In defending such refusals, mark-owners are required to argue that the mark has obtained sufficient secondary meaning to identify the source of the product.
Arguing that a mark has obtained secondary meaning is a fact-intensive process that
Movie and Book Title Trademark Registration: Serialization
To defend against such a refusal, an applicant bears the burden of proving either acquisition of secondary meaning and/or producing evidence that the mark use is not only serialized but that the name or title is capable of evidencing that in the public mind.
That is, evidence must be produced to demonstrate that the name or title is used a reference by the consuming public for the entire series of films, TV episodes, or book.
For example, a court has held that The Magic School Bus was registrable as a trademark because, when utilized by the public, it referred to the entire book and corresponding (and very popular) television series.
Detroit Trademark Attorneys: A Bottom Line as Regards Film and Book Title Trademark Registration
The bottom line with regard to trademark registration for film and book and other titles is that they are not applications that should be attempted on a "DIY" basis.
A knowledgeable trademark attorney should be retained to properly conduct an initial clearance search for the proposed name or title and then to draft, file, and, most importantly in this case, prosecute the application.
The Hilla Law Firm, PLLC will work with you prior to the filing of any application to clear your mark and to advise you as to the risk involved in proceeding to file an application for a film or book title.
We offer free initial consultations in-office or virtually to Michigan clients and virtual or telephonic consultations to clients throughout the United States for trademark matters (only).
If you are interested in discussing the filing of an initial trademark application or defending an office action already filed, please contact us to discuss your matter or click here to directly schedule your initial trademark consultation into our calendaring system.