The issue thus presented to the Trademark Board and to this Court was the date at which the rights of the parties in and to their claimed marks vested and thus which party was the “prior” user of the mark.Herbko manufactures and sells the Crossword Companion Roll-A-Puzzle® System, a handheld device with scrollable rolls of crossword puzzles. The system uses a variety of replacement rolls with multiple puzzles on each roll. Herbko markets its puzzle system through a number of stores, including Marshalls and K-Mart, and through several catalogs.
In June 1994, Herbko filed an intent-to-use (ITU) application seeking federal registration of the mark CROSSWORD COMPANION and design for its crossword puzzle system. In its amendment to allege use, Herbko declared September 22, 1994 as the date of its first use of the mark in commerce. Herbko later obtained registration of the mark CROSSWORD COMPANION and design for a "crossword puzzle system, namely paper crossword puzzle rolls and hand held puzzle roll scrolling device sold as a unit and crossword puzzle replacement rolls sold separately." Reg. No. 1,914,863. Herbko's mark and design appears below: [mark and design not included]
Kappa publishes a variety of paperback books. Among Kappa's books is a series of crossword puzzle books sold under the name CROSSWORD COMPANION. Kappa first used the name CROSSWORD COMPANION in 1993. [Note: thus before the use alleged by Herbko and before the date of the filing of the ITU application] Between April and October of that year, Kappa shipped over 1,056,200 copies of the first CROSSWORD COMPANION book to WalMart. WalMart sold the books both individually and as part of a set of "companion" activity books. Kappa made no significant sales of the books in 1994. In February 1995, Kappa recommenced shipments of its CROSSWORD COMPANION books, selling 918,705 books from 1995 to 1997. Reviewing the evidence in a light most favorable to Herbko, the non-moving party, this court assumes that Kappa did not publish a second volume of its crossword puzzle books until 1995. [emphasis added]
The Court stated in the above regard:
Thus one of the issues on appeal was which party had the priority of use. As stated by the Court:On appeal, Herbko argues that Kappa's use of the mark as a book title constitutes a descriptive use of the mark, and that Kappa is not entitled to priority without evidence that the relevant public associated the mark with a single source before Herbko's ITU filing date. [emphasis added] Conversely, Kappa argues that use of the mark in connection with a book series establishes priority back to the first volume of the series under trademark law's analogous use theory.
And since the case involved a series of books, the issue became: when did the trademark rights of the parties become perfected? The Court stated:One valid ground for cancellation is section 2(d) of the Lanham Act, which precludes registration when a mark is likely to cause confusion with a mark or trade name previously used or registered by another. 15 U.S.C. § 1052(d) (2000); Cunningham, 222 F.3d at 946. Hence, a party petitioning for cancellation under section 2(d) must show that it had priority and that registration of the mark creates a likelihood of confusion.
The Court disagreed with the Trademark Board’s ruling and instead the Court ruled:Before a prior use becomes an analogous use sufficient to create proprietary rights, the petitioner must show prior use sufficient to create an association in the minds of the purchasing public between the mark and the petitioner's goods. Malcolm Nicol & Co. v. Witco Corp., 881 F.2d 1063, 1065, 11 USPQ2d 1638, 1639 (Fed. Cir. 1989). A showing of analogous use does not require direct proof of an association in the public mind. T.A.B. Sys. v. Pactel Teletrac, 77 F.3d 1372, 1375, 37 USPQ2d 1879, 1882 (Fed. Cir. 1996). Nevertheless, the activities claimed to create such an association must reasonably be expected to have a substantial impact on the purchasing public before a later user acquires proprietary rights in a mark. Id.
What the above means is that in order to establish trademark rights to a series title, the claimant must have published the second volume within a reasonable time after the first volume and show that the public has developed an association (i.e. the series title has developed a secondary meaning) in the minds of the public. If the claimant has done this, then the rights in trademark become established as of the publication of the first book in that series.The Board's decision is contrary to this court's precedent. That precedent clearly requires not only timeliness, but also that Kappa use the mark in a manner reasonably expected to create an association between the mark and its goods. See Malcolm Nicol, 881 F.2d at 1065. This court's precedent also clearly holds that the title of a single book cannot serve as a source identifier. In re Cooper, 254 F.2d 611, 614-15, 117 USPQ 396, 399-400 (CCPA 1958) (titles of single books cannot be registered as a trademark); see also Trademark Manual of Examining Procedure § 1202.08 (3rd ed. June 2002) ("The title of a single creative work is not registrable on the Principal Register or the Supplemental Register."). Thus, the publication of a single book cannot create, as a matter of law, an association between the book's title (the alleged mark) and the source of the book (the publisher). As such, if a later party uses or applies for a trademark before the creation of a series (i.e., before publication of a second volume), the proprietary rights for the series title date back to the first volume of the series only if the second volume is published within a reasonable time with a requisite association in the public mind. That association requires more than publication of a single book. [emphasis added]
The Court found, however, that Kappa failed to produce such evidence. The Court stated:
The Court discussed the alternative argument advanced by Kappa that Kappa was still entitled to have its rights in trademark even though it only related to Kappa’s initial book (i.e. single work). The Court stated:In this case, Kappa did not provide evidence of a second volume before Herbko's 1994 ITU application. Kappa must rely, therefore, on the 1993 sales of its first CROSSWORD COMPANION volume to show the required association between the CROSSWORD COMPANION mark and its puzzle books. Kappa sold over a million copies of the first volume to WalMart in 1993. Despite Kappa's substantial sales in 1993, however, those sales pertain only to the first CROSSWORD COMPANION volume. As indicated above, such sales are insufficient to form the needed association. Even sales of a large number of copies of a single work cannot create a source identifying association in the public mind unless this court abandons its precedent that a single work cannot serve as a source identifier. Cooper, 254 F.2d at 614-15. Because sales of a single book title are insufficient to create proprietary rights and because Kappa provided no other evidence of association creating activities (e.g., use of mark as trade name), the Board erred in holding Kappa established priority to the mark.[emphasis added]
The Court also held that the 2 titles were confusingly similar and likely to cause confusion. The Court found that the design differences between the marks were not significant differences and thus the confusion came because of the use of the words. In addition, the Court found further likelihood of confusion because the consumers to which the books were directed were the same, the marketing channels overlapped and because the level of consumer sophistication would be low because of the low prices of the respective books. Therefore, even though the marks were deemed to be confusingly similar, the Court as indicated ruled that Kappa was not a “prior” user because it only had 1 book out by the time of the ITU application on the part of Herbko.In Cooper, the Court of Customs and Patent Appeals held that a single book title serves to identify the book a purchaser desires but does not function to identify the source of that book. 254 F.2d at 614-15. As explained by Cooper, the public may associate a single book title with, at most, an author or a subject, but not with the source of the book-a publisher or printer. Id. at 615-16. While acknowledging that "[t]he name for a series . . . has a trademark function in indicating that each book of the series comes from the same source as the others," the court in Cooper stated that titles of single works merely serve to describe the work no matter how unrelated to the book contents. Id. at 615; see also In re Polar Music Int'l AB, 714 F.2d 1567, 1572, 221 USPQ 315, 318 (Fed. Cir. 1983) (name ABBA as title for record series serves a trademark function and is not just an identification of the singers). In any event, Cooper held that book titles of single works cannot be inherently distinctive because they identify a book, not its source.
Indeed, book titles are often descriptive of book contents. For example, The Old Man and the Sea describes a book about an old man and his experiences at sea. Ernest Hemingway, The Old Man and the Sea (Scribner 1952). Other book titles, of course, may have little or no relation to the contents of the book, such as Gone with the Wind, which is a fictional novel about several individuals living in Atlanta during the Civil War. Margaret Mitchell, Gone with the Wind (Macmillan Publishing Co. 1936); see 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 10:3 (4th ed. 2002). Regardless of the actual relation of the title to the book, this court's precedent has treated all single works, such as single book titles, as "inherently descriptive" at best and "inherently generic" at worst. Cooper, 254 F.2d at 614-15; see also McCarthy § 10:4 (PTO treats titles of single works as generic and not registrable even upon showing of secondary meaning); In re Posthuma, 45 USPQ2d 2011, 2012-13 (TTAB 1998) (prohibiting registration for the title of a single theater production).
Even where a title bears little or no relation to the book contents, however, another reason forecloses trademark rights in the title to a single book, at least beyond expiration of the book's copyright. That reason results from the interplay between copyright and trademark law. Specifically, while trademarks endure as long as the mark is used, copyrights eventually expire. Upon expiration of the copyright, others have the right to reproduce the literary work and to use the title to identify the work. See McCarthy, supra, § 10:4 (citing J.L. Vana, Single Work Titles and Group Artist or Author Names: Registrability Revisited, 88 Trademark Rep. 250 (1998)). For example, once the copyright to Gone with the Wind expires, a variety of publishers may wish to market copies of the work. A trademark in the title to this single book would compromise the policy of unrestricted use after expiration of the copyright because a book with a trademarked title, of course, could be published only under a different title. Gone with the Wind would perhaps become That Book About Scarlett O'Hara and Rhett Butler or My Life with Tara, 1864. The policy against proprietary rights in the titles to single books therefore finds additional support in the interface with copyright law.
Despite Kappa's arguments, for the reasons mentioned above, there is no basis for holding that titles of single works are capable of inherently functioning to identify a source or origin of the book.
The copyright law does not protect titles. This is what the Copyright Office Circular 34 states in part:
However, see "Fair Use: Further, Further Issues" for a case involving the use of short phrases under the fair use provisions of the copyright law.Names, titles, and short phrases or expressions are not subject to copyright protection. Even if a name, title, or short phrase is novel or distinctive or if it lends itself to a play on words, it cannot be protected by copyright.
To be protected by copyright, a work must contain at least a certain minimum amount of authorship in the form of original literary, musical, pictorial, or graphic expression. Names, titles, and other short phrases do not meet these requirements.
Trademark law in part is designed to protect the consumer from being confused about source and origin. The law in regard to titles of books falls squarely within those goals.
© 1996, 2003 Ivan Hoffman. All Rights Reserved.