Trademark Protection for Names in Creative Works

Navigating trademark registration in the USA can be complex, especially when it comes to protecting names associated with authors, artists, and fictional characters. Generally, the U.S. Patent and Trademark Office (USPTO) does not grant trademarks for names that merely identify a person or a character within a single creative work. However, under specific conditions, names that serve as identifiers for a series or a brand may qualify for trademark protection.

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Trademark Considerations for Authors and Performers

According to trademark law books, simply using an author’s or performer’s name on a single book, album, or other creative work does not make it eligible for federal trademark registration. For a name to qualify as a trademark, it must function as a brand that identifies the source of a collection or series of works.

For instance, in the case of In re Scholastic Inc., 23 USPQ2d 1774 (TTAB 1992), the name “THE MAGIC SCHOOL BUS” was deemed a trademark because it was used consistently across a series of books. The USPTO found that the name was prominently featured, actively marketed as part of a series, and recognized by consumers as a brand for multiple works.

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How to Establish a Name as a Trademark for a Series

To secure trademark protection for a name linked to a series, the applicant must present concrete evidence, including:

1. Documentation showing the name appears on at least two distinct works, such as multiple book or album covers.
2. Marketing materials that demonstrate efforts to promote the name as a recognizable series.
3. Third-party sources referencing the name in the context of a series.
4. A sworn statement affirming that the applicant produces the series and maintains control over its quality.

If the applicant cannot provide sufficient proof, the mark may only qualify for the Supplemental Register, which offers limited trademark benefits.

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Trademarking Names of Fictional Characters

The same rules apply when seeking trademark registration in the USA for character names. If a name is solely used within a single book, movie, or other creative work, the USPTO may deny registration on the basis that it simply describes the character rather than serving as a source identifier.

For example, in In re Scholastic Inc., 223 USPQ 431 (TTAB 1984), the name “THE LITTLES” was deemed ineligible for a trademark because it was only used to identify the characters in a children’s book series. However, if a character’s name is used in a broader branding strategy—such as on book spines, merchandise, or promotional materials—it can strengthen the case for trademark protection.

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Trademark Eligibility for Entertainment Services

Trademark protection isn’t limited to physical goods—it also extends to services, particularly in the entertainment industry. If a name is linked to a recognizable entertainment service, it may qualify for trademark registration.

A relevant case is In re Florida Cypress Gardens Inc., 208 USPQ 288 (TTAB 1980), in which the name “CORKY THE CLOWN” was found to function as a trademark because it was used on promotional flyers for live entertainment performances. This ruling underscored that a name can serve as a trademark when it is strongly associated with a service and recognized by the public as a brand.

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Trademarking Names for Visual Art

One exception to the general rule applies to original artworks. Unlike books or recordings, paintings, sculptures, murals, and jewelry do not need to be part of a series to qualify for trademark protection.

A key precedent is In re Wood, 217 USPQ 1345 (TTAB 1983), where the pseudonym “YSABELLA” was successfully registered as a trademark for original art. This decision set a standard that artists can trademark their names when used on unique pieces, provided they function as brand identifiers rather than mere signatures.

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Steps to Trademark Registration in the USA

To successfully register a trademark, applicants must follow a structured process:

1. Conduct a Comprehensive Search – Ensure the name is not already trademarked to avoid conflicts.
2. Submit an Application to the USPTO – Specify whether the trademark applies to a series or a particular product category.
3. Provide Supporting Documents – Include evidence that the name is actively used in commerce as a trademark.
4. Respond to USPTO Inquiries – If the application faces challenges, applicants must submit additional arguments or documentation.
5. Maintain the Trademark – Periodic renewals and use in commerce are required to keep the trademark active.

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Key Considerations for Trademark Applicants

1. A name must do more than identify an author, artist, or character—it must serve as a brand for a series or broader creative venture.
2. Fictional character names can qualify for trademarks when used beyond their original work, such as in merchandise or branding efforts.
3. Entertainment services can establish trademarks for character names if they are used to promote events or performances.
4. Original artwork can receive trademark protection without needing to be part of a series.
5. Securing trademark registration in the USA requires providing substantial evidence that the name is a recognized brand identifier.

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Final Thoughts

Understanding trademark law books and the requirements for protecting names in creative industries is essential for authors, artists, and entertainers. Whether seeking to trademark a book series, an artist’s name, or a fictional character, applicants must ensure their mark functions as a true brand. By following proper legal procedures and presenting strong evidence, creators can secure trademark protection and establish long-term brand identity in their fields.

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Need Help with a Trademark Application? Speak with an IP Attorney Today!

Whether you’re filing a new trademark application or need assistance with an existing one, our experienced trademark attorneys are here to help. Contact us for a consultation and let’s discuss your case!