To Translate or Not to Translate: The TTAB Recently Held in In re Douglas Wood that Merely Translating a Book from English to a Second Language Does Not Create a Second Creative Work.

Introduction

Robert Kiyosaki distinguishes best-selling authors from best-writing authors. In his best-selling book, Rich Dad, Poor Dad, (ad) he shares a story of a conversation he had with a journalist who asked him how to write a book that will sell as well as Rich Dad, Poor Dad. Kiyosaki responded to the journalist that she probably writes better but he knows how to sell.

Whether writing is your vocation or something you use to build your brand, knowing how to sell your writing is important. You likely benefit from branding. To that end, you might want to register one or more of the marks you use with your book brand with the USPTO. Unfortunately, U.S. trademark law imposes a rule that does not permit trademark registrations for titles of single creative works. In re MCDM Prods., LLC, 2022 USPQ2d 227, at *2 (TTAB 2022) (citing Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§ 1051, 1052, and 1125, and Herbko Int’l Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002) (“This court’s precedent . . . clearly holds that the title of a single book cannot serve as a source identifier.”). You could establish trademark rights, however, when you use the name in connection with two or more creative works.

For reference, the rule is intended to remove obstacles to the entry of copyrighted material into the public domain. In re MCDM Prods., LLC, 2022 USPQ2d 227, at *3 n.2. Materials such as books, sound recordings, downloadable songs, downloadable ring tones, videocassettes, DVDs, audio CDs, and films are usually single creative works.” TMEP § 1202.08(a). Section 1202.08(b) discusses what does not constitute a single creative work. With respect to books, it states that

A book with a second or subsequent edition in which the content changes significantly is not regarded as a single creative work. For example, a statement on the jacket cover that a cookbook is a “new and revised” version would indicate that it includes significant revisions. However, a new edition issued to correct typographical errors or that makes only minor changes is not considered to be a new work.

In re Douglas Wood

The Trademark Trial and Appeal Board (“TTAB”) recently confronted the question of whether selling English and Spanish versions of the same book is enough to establish trademark rights. See In re Douglas Wood, Serial No. 88388841 (TTAB Aug. 15, 2023). The applicant, Douglas Wood, sold a book entitled CHURCH BOY TO MILLIONAIRE. He also sold a Spanish version of the book entitled DE CHICO DE IGLESIA A MILLIONARIO.

Make it stand out

Whatever it is, the way you tell your story online can make all the difference.

Screenshot from the Applicant’s Website

The Applicant argued that “[t]ranslation is an art or a science” and that the English and Spanish versions are directed to different audiences. He argued alternatively that “the Spanish language work is a significantly changed version of the same work,” and that TMEP Section 1202.08(b) “permit[s] registration of significantly different versions of a single work.”

The TTAB ultimately affirmed the examiner’s refusal. The decision was based primarily on the evidence (or lack thereof). Namely, the Applicant did not submit evidence that the Spanish translation contained different content. The Board noted that the only evidence distinguishing the works was from the home page (shown above), which states “GET THE BOOK TODAY” and “GET THE BOOK TODAY IN SPANISH.” The Board recognized that both book translations were referred to as “The Book.”

Because there was no evidence that the Spanish translation constituted a second work, the Board affirmed the refusal.

Conclusion and Nick’s Take

The Board clarified that it was not establishing a categorical rule concerning translations and the single creative work rule. Here, there was no evidence to show that the Spanish translation established a second work. However, in other cases, there could be sufficient evidence that translations constitute multiple works and thus, trademark rights.

Authors and practitioners should keep the single work rule in mind when preparing trademark applications. It would benefit them to consider ways to create multiple works. In the case of translations, perhaps the multiple translations could contain exercises or commentary unique for the intended audience. If that is the case, practitioners should submit those differences into evidence during trademark prosecution.

If you create creative works and want to protect your brand, be sure to contact experienced trademark counsel. Click here to schedule a consultation.