I will start this blog post with a simple trademark law fact: If you write a book, you are not allowed to register a trademark for the name of that book. Given that, perhaps you wonder how a person would arrive at the question: “But can I register a trademark for a translation?”
A Hypothetical Illustration
For example, say I write the nonfiction book Crystal’s Guide to IP Law. As the writer of that book and an actual IP lawyer, I (hopefully) know that I cannot register a trademark for the title. But perhaps my book is so popular that it gets translated into a foreign language. (By the way, there are IP lawyers in other countries that are interested in US IP law.)
High on my success, I decide that I want to make Crystal’s Guide to IP Law a brand. I set out to expand it into a series, writing separate books on copyright law, trademark law, and patent law. Maybe I will dedicate an entire volume to trade secrets. We will make t-shirts and mugs and desk calendars with important IP law dates – all under the umbrella of what is now the brand “Crystal’s Guide to IP Law.” (I am actually starting to like the sound of this…)
However, I am worried that someone else might beat me to it. I want to register a trademark for Crystal’s Guide to IP Law so that no one can start manufacturing their own IP desk calendars. So I begin to wonder about a work-around: I know it is impossible to register a trademark for a single book title, but is it really a single book title if there is also a translation with a different title? Especially since my English website is selling both books under the banner of Crystal’s Guide to IP Law – can I obtain a trademark for a translation?
We can end the hypothetical example here. This setup is essentially what author Douglas Wood wanted to do.
Church Boy to Millionaire and De Chico de Iglesia a Millonario
Mr. Wood is the author of a book called Church Boy to Millionaire, which was translated into Spanish. He wanted to register Church Boy to Millionaire as a standard-character mark that would encompass:
“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.”
Mr. Woods’ application stated that the mark had been used on two books – the English version and the Spanish version.
The trademark examiner did not see it that way and refused registration, citing the fact that it was not possible to register a trademark for a single creative work. A translation was not, in fact, a work-around to this rule. A trademark for a translation still did not count.
Mr. Woods appealed the decision to the Trademark Trial and Appeal Board (TTAB), arguing that the translation was a different work, since the decisions the translator made had a significant impact on the content of the book.
Did the Translation Argument Fly?
Interestingly, the Board found that such a thing was possible – a translation can potentially result in enough unique content that it might qualify to be registered “as a second or subsequent edition.” However, they did not find that to be the case with Woods’ book. In fact, they argued that he not only produced no evidence to that effect, but actually harmed his case by using language on his website selling the idea that both versions contained the same content. Oops!
So, can you acquire a trademark for a translation of your book? Possibly. However, there is a large limitation – you can only register a trademark if the translation alters the content of the original creation so much that it feels like a different book. And I would wager that most authors would not want to claim such a translation of their work.