Here's the Thing About Trademarking Books
A couple of months ago, one of my clients had heard that she would need to trademark her new book and she asked me if I knew that to be the case. I've dealt with trademarks and copyrights in my custom puzzle business some time back, and I knew creative works essentially protected themselves. There are easy ways these days to prove when you wrote or created something, though it never hurt to send in a copy for the copyright protection. Trademark, however? It still didn't strike me as necessary, but I wanted to say definitively. So I Googled and came across this: https://www.uspto.gov/trademark/laws-regulations/title-single-work-refusal-and-how-overcome-refusal. Then, because I wanted a clear yes or no to tell my client, I put the question out to my Savor networking group, got replies and then an email from one lawyer. There's nothing like having a network, y'all.
Nupur Shah of Nupur Shaw Law replied and I asked her if I could share her response with my village, to which she was happy to say yes. Here's what she said:
Trademark law does have a limitation to register title of books, songs or theatrical performances, to the extent that they are single works. USPTO [United States Patent and Trademark Office] only grants registration to such works if they consist of a series. But such refusal can be overcome if the applicant shows that the mark has acquired distinctiveness (generally shown through 5 years of continuous use), or present arguments that the mark is not merely descriptive of the work that it represents. These are high standards to prove and do require investment of time and resources.
If your client is publishing just 1 book and wants to register the title of that 1 book as a trademark, he/she will not be able to get a trademark registration easily. The applicant will need to show either acquired distinctiveness in the title, or be prepared to argue that the mark is not merely descriptive. Not easy but can be done.
So to answer your question, for a first time publisher of a single book, it may not be advisable to apply to register the title of a single book as a trademark.
Love it when things are simple. It's work enough getting that book created. No need adding unnecessary hurdles to your race. If you are looking for trademark help, however, Nupur is a great starting point. In case you want to reach her:
Nupur Shah Law, P.C.
295 Madison Avenue, 12th Floor
New York, NY 10017
Tel.: 646-820-1366
www.nupurshahlaw.com
All clear? All clear.
