“Somebody Stole My Title!”

The writer was distraught. Just as her book was picking up sales, another novel appeared on Amazon with the exact same title. “It’s been pinched,” she said in her British lilt.

I hated to tell her that titles are not protected by U.S. copyright law.

It’s ironic. Anyone who has written a book will tell you how difficult it is to come up with a title that is both resonant and eye-catching. Yet titles are not protected under copyright law because they are considered too short to contain sufficient “original expression.”

But there is a way to protect some book titles, trademark law. Not all titles will qualify; they must meet certain criteria. If you want any chance of getting trademark protection for your book title, read on.

(Trademarks differ from copyrights. You own a copyright as soon as you put your work into tangible form. It’s automatic. But trademark rights are acquired by actual use of the mark in connection with the sale of goods or services. Even then, the mark must be distinctive and not confusingly similar to another mark already in use on a similar product.)

To become a trademark, your title must have the following Trademark Elements:

The title must be unique and distinctive.  Go to Amazon and search “betrayed.” You’ll find over twenty-five books with that title. While you’re at it, search lost, shadow, stolen, revenge, forgiveness, love, or guide to life with…children, cancer, a golden retriever. If your title consists solely of common words, then you can write off claiming it as a trademark, with one exception which I’ll discuss below. For trademark purposes, the best titles are unique, made-up words like Swamplandia or Freakonomics.

And

The title is not merely descriptive.  Descriptive titles, such as Hiking Trails of the Sierras or How to Trim an Apple Tree, are rarely trademarks.

And

Your book is part of a series.  You are more likely to gain trademark status for the title of a series of books, such as Harry Potter, Dairy of a Wimpy Kind or the For Dummies line.

Or

Your book is part of a broader business venture.   If your book grew out of (or grows into) a larger enterprise, such as consulting, public speaking, workshops, DVDs sales, or merchandising, then your title and related phrases are likely to be considered trademarks. For example, Freakonomics.  Generally, people’s names cannot become trademarks, but Martha Stewart and Deepak Chopra are both registered trademarks because they are associated with larger businesses.

However, if your series title consists of common or descriptive words only, then the name may not qualify as a trademark. The exception–Secondary Meaning.

Well-known titles with Secondary Meaning.   The title of an individual book or series may be entitled to some trademark protection if it is so well-known that it achieves “secondary meaning.” For instance, The Da Vinci Code or The Book Thief. If you released  The Doug Vinci Code, you would be inviting a lawsuit for unfair competition or some other claim.

If you have a unique and distinctive title that is associated with a series or a larger business, consider registering the trademark with the Federal Patent and Trademark Office.  Registration has many advantages. For more information, visit the USPTO page titled Trademark Basics.

You need not wait until your series or business is launched to apply for trademark registration.  If you have a good faith intention to use the trademark, then you may file an “intent-to-use” (“ITU”) application.  An ITU application allows you to “reserve” your mark for up to thirty-six months. When book two of your series is published or your book-plus-business is up and running, file a Statement of Actual Use to become a fully-registered trademark.

Mark Fowler’s has a great post this topic.

Also check out. Lloyd J. Jassin’s Copylaw.com  and  Brian A. Klens in Writers Digest

Do you think this is fair? Should it be easier to trademark a distinctive book title?