Title of a Single Creative Work… or Something More?

In a recent precedential opinion, the U.S. Patent & Trademark Office Trademark Trial and Appeal Board (TTAB) tackled the often frustrating question of what it takes to acquire trademark rights in the title of a single creative work, in this case a book.

It has long been the rule that a title of a single book (or play, or movie) cannot function as a trademark because the title does not create a separate and distinct commercial impression that identifies the source of the goods. Instead, titles have been held to merely describe the book, or creative work, itself. In re Cooper, 254 F.2d 611 (C.C.P.A. 1958).

However, in Shannon DeVivo v. Celeste Ortiz, Opposition No. 91242863 (TTAB Mar. 11, 2020), the TTAB provided a useful roadmap of the types of additional uses owners can employ to enhance the trademark significance of book titles.

In this case, Celeste Ortiz, (“Applicant”) filed a trademark application for the mark ENGIRLNEER covering goods such as mugs, lanyards, and clothing in Classes 21, 22, and 25. Shannon DeVivo (“Opposer”) opposed the application, asserting prior use of the identical mark for various website, educational, and information services, and for books. The TTAB sustained the opposition, finding that Opposer had established priority of use through registration and use of the engirlneer.com domain name and website, publication of a book of fictional ENGIRLNEER characters, and through speaking at public events.

Notably, the TTAB partly relied on the fact that DeVivo had used the ENGIRLNEER mark in connection with a single book in ways in which the TTAB found to be a trademark use, namely:

• Using the mark in a small “seal of approval” on the bottom of the front cover;
• Using the mark on the back cover of the book; and
• Using the mark to identify one or more fictional characters featured in the book.

The TTAB found parallels between Opposer’s use of ENGIRLNEERS and the Federal Circuit’s consideration of the trademark ABBA (of the famed music group ABBA) for sound recordings. In re Polar Music Int’l, 714 F.2d 1567 (Fed. Cir. 1983). In the ABBA case, the court considered a label affixed to a phonograph record, an album cover, and point of purchase displays in record stores to find that ABBA could function independently of the music group as a source indicator for sound recordings and “not just an identification of the singers.” Id.

In the case at hand, the TTAB explained that even though ENGIRLNEERS appears in the title of the book, and is the name of the group of characters in the book, “the positioning of the term distant from the title of the book, its inclusion within a design, its prominent size, its appearance on the second page in conjunction with an invitation to the reader to ‘learn how to become an engirlneer,’ and its appearance on the last page of the book, results in a separate and distinct commercial impression which performs the trademark function of identifying the source of Applicant’s book to consumers.” Based on these types of uses, the TTAB held that Opposer had created a distinct commercial impression separate and apart from the title itself.

Thus, while this decision seems to depart from the traditional rule on book titles, in context it is more in line with the traditional trademark priority examination that takes the full context of use into consideration when evaluating trademark significance and rights.

This article appeared in the May 2020 issue of MarkIt to Market. To view our past issues, as well as other firm newsletters, please click here.