Contact Us Today (303) 665-9845


Translation Not a Separate Work

Posted by James Juo | Aug 18, 2023 | 0 Comments

The title of a single creative work, such as a single-title book, typically is not considered to be a source-identifying trademark. Herbko Int'l Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002) (“This court's precedent . . . clearly holds that the title of a single book cannot serve as a source identifier.”) (internal citation omitted)); In re MCDM Prods., LLC, 2022 USPQ2d 227, at *3 (TTAB 2022) (“The title of a single creative work is not registrable on either the Principal or Supplemental Register.”). Allowing registration of a title of a single work may create obstacles to the entry of copyrighted material into the public domain. In re Cooper, 254 F.2d 611, 117 USPQ 396, 400 (CCPA 1958).

“Single creative works include works in which the content does not change, whether that work is in printed, recorded, or electronic form. Materials such as books, sound recordings, downloadable songs, downloadable ring tones, videocassettes, DVDs, audio CDs, and films are usually single creative works.” TMEP § 1202.08(a) (citations omitted).

However, a second or subsequent edition of a book in which the content changes significantly is not regarded as a single creative work. TMEP § 1202.08(b).

Church Boy to Millionaire

The mark CHURCH BOY TO MILLIONAIRE for goods ultimately identified as “Books in the field of faith-based coaching, personal development, motivational and inspirational topics; books in the nature of memoirs; books about personal development; printed matter in the field of personal development, namely, books, booklets, curricula, newsletters, magazines, printed periodicals” in International Class 16 was refused registration on the ground that it was the title of a single creative work and thus does not function as a trademark. In re Wood, Ser. No. 88388841, 2023 USPQ2d — (TTAB Aug. 15, 2023).

Applicant Douglas Wood argued that he “has published two books of different titles which have been marketed under the same mark”—namely, “Church Boy to Millionaire” and its Spanish translation titled “De Chico de Iglesia a Millonairo”—arguing that translation “is not the type of inconsequential change such as a font change or file type where the content is unchanged.”

Same Content in Different Languages

The TTAB found the evidence did not show that the books differ significantly in content, and that selling the same book in English-language and Spanish-language versions was akin to selling a book in different media formats. See In re Appleby, 159 USPQ 126, 127 n.1 (TTAB 1968) (finding that the title of a single phonograph recording was similar in nature to the title of a single book for purposes of eligibility for registration, and that “[t]he fact that applicant's recording is also available in the Spanish language is of no particular significance since ‘HYPNO-SMOKE' as used thereon, performs the same function”).

[W]e are not holding that a translation could never result in a work that is significantly different in content from the translated work. We do not rule out the possibility that creating a translation could yield a “second or subsequent edition” of a book “in which the content [has] change[d] significantly.” TMEP § 1202.08(b). There is simply no evidence in the record here that the Spanish-language version of CHURCH BOY TO MILLIONAIRE is such a work.

Because Applicant showed use of his proposed mark CHURCH BOY TO MILLIONAIRE in connection with only a single book (in English- and Spanish-language versions), the TTAB concluded that the proposed mark is not eligible for registration for the goods identified in the application.

Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.

About the Author

James Juo

James Juo is an experienced intellectual property attorney. He has successfully litigated various intellectual property disputes involving patents, trademarks, copyrights, and trade secrets. He also has counseled clients on the scope and validity of patent and trademark rights.


There are no comments for this post. Be the first and Add your Comment below.

Leave a Comment

Our firm represents clients in intellectual property claims, trademark litigation, copyright litigation, business litigation and more in the following cities and surrounding areas:

Louisville, CO | Denver, CO | Aurora, CO | Littleton, CO | Centennial, CO | Parker, CO | Watkins, CO | Westminster, CO | Arvada, CO | Golden, CO | Boulder, CO | Brighton, CO | Longmont, CO | Loveland, CO | Black Hawk, CO | Idaho Springs, CO | Larkspur, CO | Monument, CO | Fort Collins, CO | Colorado | Springs, CO | Pueblo, CO | Breckenridge, CO