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Titles of Single Works Now Trademark Eligible – Maybe

January 5, 2015

Titles of Single Works Now Trademark Eligible – Maybe

January 5, 2015

Back to Fish's Trademark and Copyright Blog

 

In late 2014, the U.S. Trademark Office issued a decision contravening prior practice, ruling that the title ROCK YOUR BODY of a single book could function as a trademark.

For decades, the Trademark Office and the Federal Circuit held that the title of a single work merely described the work and was incapable of serving as a trademark.  This served an absolute bar to registration of the title of a single work.   However, once a second work bore the same title, so that a series existed, the title could serve as a trademark.

In the ROCK YOUR BODY case, the Office ruled — quite logically — that if the reason why the title of a single work is not registrable is because the title is descriptive, it should be entitled to registration if the title has acquired distinctiveness as a trademark.

Although the ruling is designated non-precedential, the Office will likely follow its reasoning in future cases, as the Office itself states it is based on a “thorough review” of the case law and the underlying principles for refusing registration of titles.  While demonstrating acquired distinctiveness may be a challenge for the title of a single work that has not been in the marketplace long, this decision at least opens the door for registration if the owner can show the title functions as a mark, and discards prior limiting case law that made little sense.

Related Tags

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Keith A. Barritt | Principal

​Keith A. Barritt is a Principal in the Washington, DC, office of Fish & Richardson. His practice is primarily focused on all aspects of trademark law, including prosecution and inter partes proceedings before the United States Patent and Trademark Office, Internet domain name...

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