Blog December 2, 2020
Titles of Single Works Now Trademark Eligible — Maybe
- Person title
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Although the ruling is designated non-precedential, the Office will likely follow its reasoning in future cases, as the Office itself states it is based on a "thorough review" of the case law and the underlying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.
The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.
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