Trademark law is unique. Unlike other intellectual property regimes where the primary concern is protecting the rights holder, trademark law is all about protecting the consumer and maintaining the integrity of the communication exchange between producer and consumer. (That’s why the test for infringement is “likelihood of confusion.”) Unlike patent or copyright laws, which simply create a bundle

–Sharon Armstrong, Attorney

This past Thursday, John Hughes—the mind that created every slumber party-worthy movie of my youth—passed away from a heart attack. Whenever I hear John Hughes’ name, my mind, taking some sort of odd word-association trip, automatically shifts to “The Breakfast Club,” which then makes me think of the Simple Minds song “Don’t You Forget About Me” (the anthem of the movie), which then makes me think of the lead singer of Simple Minds, whose name I can’t remember but who I’m convinced has red hair…

In short, the consumer associations I have with John Hughes—and with the film “The Breakfast Club” specifically—are particularly strong, meaningful and positive. I would venture to say that, given the sheer number of pages devoted to quotes from John Hughes’ movies, I’m not alone in these associations. At the heart of trademark protection is the goal of protecting consumer associations—or “goodwill”—which is so precious to businesses building their brands. While a movie title such as “The Breakfast Club” is not technically a brand under which John Hughes technically sold goods and services, that movie, along with numerous others in his repertoire, collectively showcase John Hughes’ “brand” of narrative, wit, juvenile humor, and outlook on Gen-X adolescence.

And yet, titles of works such as “The Breakfast Club” are not protected by trademark law. The Lanham Act prohibits the registration of a title, or portion of a title, or a single creative work, because, according to the Lanham Act, a single title can’t function as a source-identifier.   See 15 U.S.C. §§1051, 1052 and 1127. However, a title used in a series, such as HARRY POTTER, is considered capable of acting as a source-identifier and may therefore achieve a trademark registration.


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