Understanding Trademark Protection
Providing advice and guidance in protecting a business’ brand is a task that we work on with clients of all sizes. For some, their interest in trademarks start at day one while others only consider a trademark after their business gains recognition. This comes from the two different types of protection that trademarks provide: (1) a trademark ensures that your business will be protected from a second business obtaining a trademark with your same name; and (2) a trademark allows for you to compel a second business to stop using your name.
The first factor is usually more important to businesses starting up who want to protect themselves from a scenario where they are forced to change their name, but likely do not have the resources to actively stop infringing marks. For more developed businesses, owners typically realize their work towards building a brand justifies the need for protection. These businesses with more years of experience also value both protecting themselves from being beat to trademark registration but also have the resources to actively stop infringing marks.
While the fees associated with filing the trademark may deter some clients, almost all business owners with a distinct name choose to file a trademark for the business name at a minimum. After the business name, a huge area of concern for many businesses we represent is protecting the branding efforts of the business and content that businesses produced.
This often includes efforts that businesses have made to increase traffic to their websites or other efforts to increase its visibility or recognition such as blog posts and articles, podcast, video content, and books. An issue these types of content may run into during the registration of the trademark is the “Title of a Single Work” refusal.
Title of a Single Work Refusal
The USPTO defines a single work as content that “does not change significantly whether that work is in printed, recorded, or electronic form.” This definition focuses on goods or services that only provide one single work rather than a series of goods or services. The difference between a single work and an approved trademark comes from the nature of the approved trademark relating to the goods and services of a business as a whole where a consumer can understand the source of the goods or services as the trademarked brand itself.
Unfortunately, single works do not meet this threshold of consumers understanding the name as the source of the goods or services. This can be best understood by thinking of a book title and considering whether the book’s title is the actual source of the good, or simply a title to remember the book by. Here, the real source of the goods would be understood as the author or publisher rather than the title.
Ways to Protect Single Work
While this single work rule is strict and does not allow for exceptions to single works, it does have workarounds for businesses that create single works in line with their services or goods. An example that comes to mind are industries like health or wellness brands, which may have a collection of health and wellness materials. In this scenario, the single work title may meet the requirements to support the approval of a trademark.
International Class 16 provides a category which specifically includes trademark protection for book series, but a more effective method of protection for books connected to a brand as a whole is to categorize the mark under a separate international class, which relates to the mark more broadly as your business activities rather than limiting the name to just the book or other single work.
By strategically categorizing your name, rather than seeking to protect the book series title alone, you will be able to better protect your brand as a whole. While this route may seem like a one that would benefit few businesses, it seems to serve an increasingly more important purpose as more and more boutique businesses focus on brand development.
The intricacies of the trademark requirements and the filing selections between 45 separate classes does not stop at single works; each category has important considerations that are not always obvious. These intricacies make room for failed trademark registrations that do not refund a denial and inadequate protection where gaps in classes allow for unwanted infringement with no legal recourse. With room for error that may make your trademark ineffective, it is important to either carefully review the trademark system through your own research or consult with an attorney to help guide you through the process.
George Fowler is an associate attorney at Henderson & Henderson, LLC focusing on business law. Contact him with any of your trademark questions and other business concerns by calling Henderson & Henderson at (843) 212-3188 or directly at firstname.lastname@example.org.