Precedential No. 22: TTAB Affirms "Single Work" Refusal of Book Title, Finding Translation Not a Separate Work

The Board upheld a refusal to register CHURCH BOY TO MILLIONAIRE for “Books in the field of faith-based coaching, personal development, motivational and inspirational topics; books in the nature of memoirs; books about personal development; printed matter in the field of personal development, namely, books, booklets, curricula, newsletters, magazines, printed periodicals," on the ground that the proposed mark is the title of a single creative work and thus fails to function as a trademark for the identified goods. Applicant Douglas Wood contended that the book and its Spanish translation are different works, but he failed to show that the two books have significantly different contents. In re Douglas Wood, 2023 USPQ2d 975 (TTAB 2023) [precedential] (Opinion by Judge Christopher Larkin).

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“The title of a single creative work, such as a book, is not considered to be a trademark, and is therefore unregistrable.” In re MCDM Prods., LLC, 2022 USPQ2d 227, at *2 (TTAB 2022). "Unlike a copyright that has a limited term, a trademark can endure for as long as the trademark is used. Therefore, once copyright protection ends, and the work falls in the public domain, others must have the right to call the work by its name.” Id. at *3 n.2.

Applicant Wood argued that his specimen of use (above) shows two books of different titles, CHURCH BOY TO MILLIONAIRE and DE CHICO DE IGLESIA A MILLONARIO, marketed under the same mark. Wood contended that translation of a book "is not the type of inconsequential change such as a font change or file type where the content is unchanged." "[T]he choice of translator ... will have a large impact on the version [of a work] that is created."

The Board stated the issue as whether the Spanish-language version of Wood's book is a "second or subsequent edition of the English version "in which the content "[has] change[d] significantly." TMEP Sec. 1202.8(b). Examining Attorney Brian J. Pino pointed out that Applicant Wood did not argue, or provide any evidence, that the Spanish version of the English book has content that significantly differs from that of the English version. The Board agreed.

The Board acknowledged that a good translation requires that the translator have both linguistic and cultural skills, but even assuming the translator of Wood's book applied such skills, that doesn't establish that the Spanish translation of Wood's book contains significantly different content from the English version.

Moreover, Wood's specimen of use displays the two versions with links that allow a visitor to "GET THE BOOK TODAY" and "GET THE BOOK IN SPANISH," "effectively confirming that the English- and Spanish-language versions of 'THE BOOK' are one and the same in content."

We hasten to add that in rejecting Applicant’s categorical position, we are not holding that a translation could never result in a work that is significantly different in content from the translated work. We do not rule out the possibility that creating a translation could yield a “second or subsequent edition” of a book “in which the content [has] change[d] significantly.” TMEP § 1202.08(b). There is simply no evidence in the record here that the Spanish-language version of CHURCH BOY TO MILLIONAIRE is such a work.

And so, the Board affirmed the refusal to register.

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TTABlogger comment: What about the booklets, curricula, newsletters, magazines, printed periodicals? Should they have survived this refusal?

Text Copyright John L. Welch 2023.