Written by Eleanor M. Lackman and Adé Jackson
A recent precedential opinion from the U.S. Patent & Trademark Office Trademark Trial and Appeal Board (TTAB), Shannon DeVivo v. Celeste Ortiz, Opposition No. 91242863 (TTAB Mar. 11, 2020), challenges the well-established concept that a single title of a book cannot be a trademark, leaving a wide opening for those who seek to register terms previously considered non-registerable.
In the DeVivo proceeding, Celeste Ortiz sought to register the term ENGIRLNEER for cups and mugs, lanyards, and shirts and sweatshirts. Shannon DeVivo, the owner of two pending trademark applications for the term for children’s books, notebooks, and a website offering information to young women and girls seeking careers in stem cell research opposed the application, citing likely confusion. On an accelerated case procedure, the TTAB sustained the opposition, partly relying on the fact that DeVivo had used ENGIRLNEER on the cover of a single book, which the TTAB surprisingly found to be a trademark use.
The TTAB acknowledged that In re Cooper, 254 F.2d 611 (C.C.P.A. 1958), concluded that “the title of a book cannot be registered as a trademark,” a conclusion grounded in the concept that the title describes the book itself. However, DeVivo argued that ENGIRLNEER’s appearance on the front cover apart from its title (in a small “seal of approval” on the bottom of the front cover) and on the back cover of the book constituted a trademark use. The TTAB also credited the use of the term ENGIRLNEER as identifying one or more fictional characters featured in the book.
The TTAB noted that a trademark must give a separate and distinct commercial impression that identifies the source of the goods to the customers. It further explained that even if the title of a book cannot be registered, other terms may, such as the name of the author, the title of a book in a series, a fictitious character in a book, and the book’s publisher. The TTAB cautioned that titles or character names that are used to identify the material in a book are not protectable because they are not used to identify the goods and distinguish them from those of others. Nonetheless, the fact that a term may also inform the public of the quality of the book does not mean that it cannot be a source identifier.
Based on those principles, the TTAB’s held that DeVivo’s use of the term – even on a singular book – was enough to create a distinct commercial impression separate and apart from the title itself. In other words, the appearance of ENGIRLNEER on the book resulted “in a separate and distinct commercial impression which performs the trademark function of identifying the source of [Opposer]’s book to consumers.” Specifically, the Board opined that “even though ENGIRLNEERS appears in the title of the book and is the group name for the characters in the book, the positioning of the term distant from the title of the book, its inclusion within a design, its prominent size, its appearance on the second page in conjunction with an invitation to the reader to ‘learn how to become an engirlneer,’ and its appearance on the last page of the book, results in a separate and distinct commercial impression which performs the trademark function of identifying the source of [DeVivo’s] book to consumers.”
The TTAB’s broad ruling departs markedly from the general rule. The ruling suggests that so long as authors and publishers follow the road map of DeVivo or otherwise replicate a title in offset form, the title of a single work may very well become a registrable trademark. In light of the descriptiveness of the term ENGIRLNEER and the fact that the TTAB did not need to address the issue in light of the other, non-book goods and services that the DeVivo offered, it is unclear why the Board decided to dial back the long-established rule. However, unless Ms. Ortiz appeals to the Federal Circuit or has a basis to bring a claim in district court, we may soon find the U.S. trademark registry filling up with applications from authors for single titles, which gives them stronger rights against someone else who may use the same term.