United States: Federal Circuit Holds That Use of Single Literary Title Does Not Create Proprietary Rights

Expanding on the principle that single literary titles are not protectable under trademark law, the Federal Circuit has held that publication of a single book cannot create proprietary rights for purposes of trademark priority, even if the publisher timely develops the work into a series. In the case of Herbko Int’l, Inc. v. Kappa Books, Inc, Case No. 02-1047 (Fed. Cir. Sept. 3, 2002), the court reinforced the principle that single literary titles do not create the requisite association within the minds of consumers to qualify for proprietary rights under trademark law.

The title of a single creative work (such as a book, videotape, film or theatrical performance) is not registrable on the Trademark Principal or a Supplemental Register because such titles are considered inherently descriptive or generic. The Trademark Office finds that use of a single title identifies only the literary work the purchaser desires; the public may associate the title with the author or a subject matter, but cannot identify the title with the source of the goods, i.e. the publisher. However, courts have generally held that titles of single literary works may be protectable under section 43(a) of the Lanham Act upon proof of acquired distinctiveness. Series of literary works are subject to full trademark protection without the additional hurdle of showing secondary meaning.

In this action, Herbko sold a handheld device with scrollable rolls of crossword puzzles named the CROSSWORD COMPANION. Herbko filed an intent-to-use application seeking registration of the mark CROSSWORD COMPANION and Design in International Class 16 in June 1994, but later amended its application to allege first use in September of 1994.

Kappa Books publishes a series of crossword puzzle books under the name CROSSWORD COMPANION. Although Kappa’s first use of the title was in 1993, it failed to publish a second volume of the series until 1995. When Kappa became aware of Herbko’s mark, it petitioned to cancel Herbko’s federal registration on grounds of priority and likelihood of confusion. The Trademark Trial and Appeal Board found that Kappa’s use of the mark in 1993 created an analogous use that was perfected when it produced the second volume of the series in 1995 because the second volume was published within "a reasonable time". The TTAB entered summary judgment for Kappa canceling Herbko’s registration.

On appeal, the Federal Circuit found that priority is shown if the petitioner proves that it has proprietary rights in a mark, which may arise from a prior registration, prior trademark or service mark use, prior trade name use, prior use analogous to trademark or service mark use, or any other use sufficient to establish proprietary rights. To qualify as an analogous use sufficient to create proprietary rights, the activities must "reasonably be expected to have a substantial impact on the purchasing public before a later user acquires proprietary rights in a mark." Slip Op. at 6. Thus, direct proof of an association in the public mind is not required.

The Federal Circuit rejected the Board’s finding that Kappa’s first use was perfected with the second volume of the series. Rather, the court held that the publication of a single book cannot -- as a matter of law -- create an association between the book’s title and the source of the book. Thus, the proprietary rights for a series title will date back to the first volume of the series only if the second volume is (1) published within a reasonable time and (2) the use is sufficient to create the requisite association within the public mind, i.e. use of the mark as a trade name. The court held that use of the title only in the context of a single book, even where significant sales of the work have occurred, does not meet the second prong of this test. In this case, the Federal Circuit found that Kappa’s use prior to Herbko’s intervening 1994 use was confined to a single volume of its later-developed series. With no other evidence of association-creating activities prior to Herbko’s use, and despite Kappa’s record of significant sales prior to such use, the court held that Kappa did not have priority to the mark.

The court also rejected Kappa’s argument that the availability of a generic term, such as "crossword puzzle book", rendered such titles subject to inherent distinctiveness. The court reaffirmed its holding in In re Cooper, 254 F.2d 611 (CCPA 1958), holding that the tiles of all single works -- regardless of the relation of the title to the subject matter of the work -- are not protectable. The court further explained that the underlying reason to preclude trademark rights also is grounded in the interplay between trademark and copyright law. When a copyright to a single work expires, the court explained, others should have the right to reproduce the work and use its title to identify the work. Therefore, trademark rights in the title would compromise the policy of unrestricted use grounded in copyright law.

Finally, the Federal Circuit found that the Board correctly decided that the marks were likely to be confused. The court held that Herbko’s addition of a grid design feature reminiscent of a crossword puzzle did not convey any distinct or separate impression apart from the identical word portion of the marks, and in fact strengthened the association of the mark with crossword puzzles. Thus, adhering to a DuPont analysis, the court found that the appearance, sound, connotation and commercial impression of the marks were substantially identical. The court also found that the parties’ goods were highly similar and were sold in similarly priced department stores such as K-Mart and Wal-Mart to similar classes of purchasers.

This decision highlights the disparity in protection accorded to single literary works. On one hand, the Trademark Office will not register single titles even with proof of secondary meaning. On the other, courts have held that titles may be protected under section 43(a) of the Lanham Act upon a showing of secondary meaning. The Federal Circuit’s decision in Herbko, consistent with Federal Circuit precedent, finds that a use as a single title will not be accorded priority over an intervening use even where some indicia of secondary meaning (i.e. significant sales) are found. Many may find it unfair that the owner of a famous literary work may be able to prevent use of a confusingly similar title but may not be able to prevent registration of the same mark. However, the court left open the possibility that other supplementary uses by the publisher of a single title -- such as merchandising or cross-promotional uses through licensing -- might surpass the high bar of proprietary use.