Before the end of last year, I wrote about obtaining trademark protection in a series of works. I used books as an example: while you normally cannot register the title of a single book, when you develop a series of books under the same title, that title develops trademark rights for which you can seek a trademark registration. Similarly, a TV show series can develop rights in the name when several episodes are released. Why do I re-bring this up?

A restaurant opened in Scottsdale not long ago called Twin Peaks. The name brings up some issues. First, there is a very well-known brewery in Tempe and Scottsdale called Four Peaks, named (presumably) after a local mountain with a prominent profile on the horizon (a friend suggested that Twin Peaks might just be half-size Four Peaks).  Second, we all know the TV show Twin Peaks. My wife made the connection between the new restaurant and the TV show before she made the connection between the new restaurant and the brewery, which indicates the significance in the likelihood of confusion analysis of the mark’s literal element with respect to the mark’s services. When a mark is famous, identity of a second mark can create confusion even if there is a chasm between the goods and services.

So is there actionable confusion here? Not likely. The restaurant and the TV show are so different that crossover is unlikely. The Trademark Office apparently didn’t think there would be confusion, either. Twin Peaks the TV show is protected with federal trademark registrations – one for “entertainment services in the nature of a dramatic television series” and the other for a “series [note: a series] of video recordings featuring entertainment.” Twin Peaks the restaurant has a few federal registrations, and the Trademark Office didn’t raise the TV show’s marks against any of them during prosecution of the applications.

Trademark rights in a book title are not ordinarily available. Trademark protection doesn’t extend to titles of single pieces. Even massive sales of a single work cannot create the necessary source-indicating quality that a trademark requires. So if your book is a stand-alone piece, you likely cannot protect its title.

Trademark protection is available when it is applied to a book series, however. The Twilight books, the Harry Potter books, the Hardy Boys series, Goosebumps, Sweet Valley High – these are examples of series of books that use the same main title and then perhaps a lesser subtitle. The main title appears consistently throughout the series and can qualify for trademark protection.

If you are considering writing a book and want to attempt to get trademark protection, you can file a trademark application on an intent-to-use basis. As long as you actually intend to properly use the mark in commerce, you can file such an application and have it processed through the Trademark Office. If you are successful in the processing phase (called “trademark prosecution”), you will have 6 months to start producing and selling your books with that mark. If you don’t do it in the first 6 months, you can extend that time by another 6 months. In fact, you can extend the time out to 3 years in total.

Consider why you want to get a trademark on your title. Is it because you are going to write several books in a series and want to prevent others from writing knock-offs? Do you want to write one book and hopefully sell merchandise related to its story? Are you hoping to have ghost-writers pump out similar novels under the main title? These considerations, and others, should be shared with your trademark attorney when you discuss how you are going to proceed.

I was in Santorini a few months ago and saw this sign.  Clients frequently have trade dress aspects of their business that are worthy of protection, but they aren’t sure about how to advertise them.  This sign illustrates a classic way for trade dress owner to teach the public about its brand.  “Look for the Flag Original.”  There area number of reasons this sign wouldn’t actually help develop trade dress rights in the US, but excluding those reasons, the sign is a great example of “look-for advertising,” which is one way to teach consumers to associate the subject of what they are looking for with the source of the product.

I saw on TV the other day the perfect gift for your favorite trademark attorney or advertising executive.  Test their subject matter knowledge with the LOGO board game.  Spin Master, a Canadian company, has developed a game tapping into the marketing that has been thrown at you all your life and the amazing repository of brand knowledge that you may have unwittingly amassed.  You can play a few rounds online, but it is the British version of the game, which makes it a bit more difficult for us Americans, unless there has been some parallel importation of the brand. 

And, of course, LOGO has been made the subject of a trademark application recently.  How cute to have the word LOGO function as a trademark for a game about logos and trademarks.