A single literary title does not create proprietary rights

In Herbko International Inc v Kappa Books Inc, the US Court of Appeals for the Federal Circuit has held that publishing a single book does not create in the minds of consumers the requisite association with the title to give rise to priority rights in that title.

Herbko owns the trademark CROSSWORD COMPANION and design for a hand-held device with scrollable rolls of crossword puzzles. Herbko's federal registration of the mark alleged first use in September 1994. Kappa Books publishes a series of crossword puzzle books under the name 'Crossword Companion'. Although Kappa's first use of the title was in 1993, it failed to publish a second volume until 1995. Kappa petitioned to cancel Herbko's registration on grounds of priority and likelihood of confusion. The Trademark Trial and Appeal Board entered summary judgment cancelling Herbko's registration.

On appeal, the Federal Circuit found that priority is shown if the petitioner has proprietary rights in a mark, which may arise from a prior registration, trademark, service mark or trade name use, or an analogous prior use that can "reasonably be expected to have a substantial impact on the purchasing public before a later user acquires proprietary rights in a mark."

However, the appellate court held that proprietary rights in the title of a literary series will date back to the first volume of the series only if the second volume is (i) published within a reasonable time, and (ii) the use is sufficient to create the requisite association within the public mind. The court held that use of the title on a single book, even where significant sales have occurred, does not meet the second part of this test as a matter of law. Therefore, Kappa did not have priority rights over the mark.

Regarding the issue of confusion, the court held the Herbko's grid design feature did not convey any distinct or separate impression, but in fact strengthened the association of the CROSSWORD COMPANION mark with crossword puzzles. Thus, confusion between Herbko's mark and Kappa's title was likely.

Jennifer L Elgin, Kilpatrick Stockton LLP, Washington DC

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