One would be very hard pressed to find someone on the face of this earth who is not familiar with the name, Harry Potter. Can “Harry Potter” be trademarked? Well, the answer is undoubtedly yes, but students of intellectual property law should be careful of the lessons drawn from this rather unusual case.
Remember, trademarks fundamentally serve the purpose of allowing a consumer to observe a Good tethered to a trademark and immediately discern the source-company which sells the Good. Trademarks are source identifiers. The idea is that rather than exclusively judging a product on the basis of its own merits, a potential customer pre-loads the Good with assumptions about the quality and worth of the product based on the beliefs the customer already associates with the brand. This is why sunglasses which otherwise cost $5.00 can be sold for $500.00 if they have the Gucci symbol on the case.
This is an incredibly important principle and relevant to our discussion because if not for the enormous success and ubiquity of the Harry Potter brand, protection of a random literary character like “Harry Potter” would not be eligible for trademark protection because such a name would not serve as a source identifier. This rule holds true for names of books, individual songs, individual poem names, and individual titles of individual works.
Notice a pattern? When there is only an individual instance or a singular instance of, in our example, a character name, the name is not eligible for registration on the Principal Trademark Register (but may be registered on the Supplemental Trademark Register). This is actually quite intuitive; the United States Patent and Trademark Office (USPTO) simply considers singular instances insufficient to demonstrate that these names actually serve as source identifiers and they are therefore not “trademarks”. Thus, if an applicant fails to identify multiple works and indicate that the name clarifies the source of these works, the mark can then only be registered via the Supplemental Register.
What Qualifies as a “Series” of Works?
As delineated by the Trademark Manual of Examining Procedure (TMEP), “Single creative works include works in which the content does not change, whether that work is in printed, recorded, or electronic form. 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). The strictly important feature of this definition is the “Singularity” standard; isolated works whose content does not evolve and is unitary in expression is for the purposes of trademark protection, a “Single creative work” and is therefore not subject to trademark protection.
Conversly, a group of multiple works, aka a “series,” is one in which an applicant can prove a trademark’s appearance for a minimum of two separate works. Examples of this can include a pair of CD covers or multiple books. Again, would anyone seriously contend that the Harry Potter series which consists of 7 volumes is not a “series”? Of course not. Harry Potter is a source identifier and therefore is eminently worthy of trademark protection.
How would J.K. Rowling go about providing the USPTO with evidence of the Harry Potter mark used as a trademark? Well, J.K. Rowling might simply provide several images of her books with the words, “Harry Potter” distinct and separate from the rest of the content on the cover. This is absolutely crucial; the trademark must be featured prominently in the design so that it serves the unique commercial purpose of allowing readers to understand that “Harry Potter” is actually a series (and an enormously famous one at that). Similarly, J.K. Rowling could provide an image of each book’s binding with the words, “Volume 1”, “Volume 2”, “Volume 3” etc. plastered across the leather brim. This universal language undoubtedly demonstrates that each work is part of a larger series, entitling the meta name to trademark protection.
Let’s consider another example. Suppose an up and coming musician were to come out with a new song and wants to trademark the name of the song. What can he/she do? Well, simply having one song under the name likely will not allow her to obtain trademark protection. Instead, this musician would be wise to consider naming the album the name of the song and perhaps coming out with a 3-part album. Here, the musician will again be required to verify that the name functions as a source identifier and can provide proof of promotion and advertising to meet the USPTO’s threshold standard.
To Trademark a Character/Song, Turn it Into a Brand
The moment one understands that trademarks are source identifiers rather than simply clever artistic word-creations, the moment one recognizes that trademarks must be identified as a brand-artifact. This understanding should guide the creative thinker into developing characters (or song names) that represent something bigger than an isolated piece of created thought and instead cultivate a larger narrative about what these characters or songs mean. Develop a story and you’ll create a protectable trademark.