Shoup’s company, Great Chefs Television, does indeed have a registered trademark of GREAT CHEFS on the Patent and Trademark Office’s Principal Register, which serves as constructive notice to all those who might use the same mark.  Shoup’s allegations of Madoff’s moral failings, however, are excessive in light of the the fact that an author ordinarily might not believe that the use of “Great Chefs” in a cookbook title would be trademark infringement.  Here’s why:

1.  Titles of books (and movies) generally aren’t eligible for trademark protection. For example, I received The Bridge of Sighs for my birthday, by Olen Steinhauer, which is an Eastern European murder mystery.  For Christmas, I gave my wife Bridge of Sighs, a novel by Richard Russo (of Empire Falls fame).  In both instances, the title identifies the book and does not indicate the source of the book, which is the function of a trademark.  (Also, Bridge of Sighs refers to a geographic landmark in Venice and geographic marks are also not inherently registrable).  There is no trademark problem here because a consumer will not believe that the title Bridge of Sighs refers to either the publisher or the author.

There is an exception to this rule, however.  When a mark is used for a series of titles, or for more than one product, like a cookbook and television show, the term can be an identifier of the producer of the multiple works, and thus eligible for trademark protection.

2.  Merely descriptive marks are not inherently registrable. These are marks that just describe the underlying product.  So the first TV show produced by Great Chefs Television was Great Chefs of New Orleans, which describes a cooking show that features great chefs of New Orleans.  Descriptive marks must acquire secondary meaning, some demonstration that consumers associate the mark with a particular source, before it can become a registered trademark.  (One can imagine that Madoff, her co-authors and publisher saw that they had a collection of kosher recipes from some of the great chefs of America and decided to title the cookbook, well, Great Chefs of America Cook Kosher, and didn’t think that their descriptive title could be trademark infringement).

To establish secondary meaning the applicant must show that the primary meaning of the mark is not the product, but the source.  There are three ways to establish secondary meaning for the trademark examiner at the Patent and Trademark Office:

1.    A prior registration of the same mark in the Principal Register;
2.    A statement by the applicant that the mark has become distinctive of the applicant’s goods or services through exclusive and continuous use in commerce for the previous five years;
3.    Actual evidence of acquired distinctiveness regardless of how long the mark has been used.

The application was started in April of 1983 and then granted in February of 1985.   Great Chefs Television didn’t already have GREAT CHEFS on the Principal Register (television show titles are registrable) and the cooking show and companion cookbooks had been in existence less than five years when the trademark was granted, so there must have been actual evidence of acquired distinctiveness.  What could that have been?  How about a television show on PBS, in an era before the Food Network and its shows like Iron Chef and Bravo’s Top Chefs, where a cooking show on public TV could indeed stand out and be well-known.