The Trademark Office will refuse to register the title of a single creative work. Titles of single works do not function as trademarks because they identify a specific work rather than the source of the work. For example, the title of a single book cannot be registered, as it identifies that particular book and not the publisher.
However, the title of a series of creative works, such as books, may be registrable if it functions to identify the source of the goods.
- To register a series title, you must submit evidence demonstrating use of the title on at least two distinct creative works.
- Changing the format of the same work does not constitute a series. For instance, using the same title on a print book and an audiobook does not create a series.
- Similarly, the title must be used on distinct creative works, not on merchandise such as posters or t-shirts.
You can only register a portion of a title if you can show that the portion:
- Creates a distinct commercial impression separate from the full title.
- Is used on a series of works.
- Is promoted or recognized as a mark for the series.
For example, if "THE LITTLE ENGINE" is the mark you want to register, but it appears on the book as "THE LITTLE ENGINE THAT WENT TO THE FAIR", the registration will be refused because it's only a portion of the title of a single work. To establish use on a series, you need to provide additional book covers, such as “THE LITTLE ENGINE GOES TO SCHOOL" and "THE LITTLE ENGINE AND THE BIG RED CABOOSE."
Furthermore, it's crucial to demonstrate that the public recognizes the portion of the title you seek to register as a mark for the series. This can be achieved through evidence like prominent display on book covers, promotional materials that highlight the portion as a series title, and recognition by reviewers and consumers as a source indicator.
The identification of goods and services in the application does not need to explicitly mention use on a series. As long as the record includes evidence of the series, it is sufficient. Even if the creative work is part of a larger list of goods/services, a refusal based on the title of a single creative work can still be issued.
Please email any further questions that you may have regarding trademark registration, or else feel free to call at (303) 665-9845.