GREAT TITLE, BUT CAN YOU PROTECT IT?

Many people believe that titles to publications or other works cannot be protected. This misconception stems from the fact that although copyright law protects the content of a particular publication, the Copyright Act provides that words, slogans and short phrases are not protectable under copyright law. Copyright Office regulations and numerous court decisions have determined that titles are equivalent to short phrases and, as such, are not protectable.

But is another type of intellectual property protection available? Trademark law protects words, logos and other devices that identify the source of goods or services the trademark owner sells, and distinguishes them from goods or services offered by another. Titles seem to fall within this definition. Unfortunately, relevant court decisions have made clear that titles, at least for single publications, will not be given trademark protection absent proof that they have acquired â€œsecondary meaning.â€

Under trademark law, marks that describe an element of the product or service they are used with are not entitled to trademark protection unless the mark owner can establish that when consumer see the mark, they do not think of its as a descriptive term but rather think of it as the trademark of the owner. This is called â€œsecondary meaningâ€. An example is the trademark â€œSharpâ€ for televisions. Sharp is descriptive because the televisions sold under the mark contain a â€œsharpâ€ picture. However, because the mark and products sold under it have been extensively marketed, and have been used for a long period of time, consumers, when they see the mark, generally think of the company that manufactures the televisions rather than that the mark is describing a characteristic of those televisions. â€œSharpâ€ has, therefore, acquired secondary meaning, and become a very valuable brand.

Interestingly, applicable Patent and Trademark Office regulations and related court decisions allow trademark protection for series of books, periodicals or newspapers in certain circumstances without proof of secondary meaning. The rationale for this is that a series title functions as a trademark because it indicates that each individual work in the series originates from the same source as the other works in the series. In this way, a series title is not necessarily descriptive of any one work in the series. That said, some courts hold that if a series title is very descriptive, proof of secondary meaning may still be required to establish trademark rights.

In short, authors and publishers should not look to the law of copyrights to protect the titles to their works. Instead, it is trademark law that potentially provides the protection they seek, although evidence of secondary meaning will typically be required.