Tradition & Trademarks — A Guest Post by Robin Roberts

*Robin is my lawyer and he insists all sorts of things should be treated as trademarks.  Like “Darkship series.”  I don’t think “Musketeer Mysteries” qualifies, being too descriptive and I refuse to call the Henry VIII queen’s series, if I ever write the other books the “Divorced Beheaded Lottery Series” while the “Dead Queens Books” which is what we call it around the house is way too generic. But he has his own ideas… as you see, and he’s more knowledgeable and experienced in the field than I’ll ever be, (as well as smart and a genuinely nice guy) so he might be right.*

A Guest Post By Robin Roberts:

Trademark Law for Writers

Sarah didn’t appreciate the latest video of skateboarding cats I’d sent her, and asked “Where are you with that guest post?” So I had to cough this one up or get relegated to eating with Havey.

I’ve wanted to write a bit about trademark law and writers for awhile now because its something that I think the publishing business is not handling correctly either in its practices nor its contracts. I’ve looked at a lot of book publishing contracts over time and especially recently, and they can be quite frustrating.  As I’ve mentioned elsewhere, sometimes my frustration is more from the ambiguous drafting than the actual effect of the intended contract language. And one of the things that isn’t as well handled in the publishing business as I think it should be are trademarks.

This is a bit baffling to me, specifically why their treatment of trademarks embodied in the book trade is so unsophisticated.  But let us discuss for a minute what trademarks are.  The classic definition that I use is “a trademark is a distinctive word, symbol, design, phrase or other thing that is intended to distinguish the origin of goods or services”. (Technically “trademark” is for goods, and “service mark” is for services but I’ll just use “trademark” or “mark” here). So a trademark can be almost anything, indeed Harley Davidson tried to register a trademark in the sound of their motorcycle exhaust note and only failed because of a functional doctrine that I won’t go into here.

What are more common trademark issues for writers are book titles, series titles and such. Recall that, by statute, you can’t copyright a short phrase or a title.  So if I write a book, I can’t protect the title using copyright law.  That’s why we often have books published with the same title.

What Is Protectable?

In trademark law, we have a concept of a spectrum of marks with varying degrees of strength. A “strong” mark is one that is very distinctive. The spectrum, from strongest to weakest, is: Fanciful, Arbitrary, Suggestive, Descriptive or Generic. Fanciful mean a word that is madeup or coined for the mark.  A common example is “Exxon” – a word that means nothing in any language. Arbitrary refers to the use of a word that has meaning, but unrelated to the product. “Banana Tires” would be an example the USPTO uses in its trademark booklet. Tires have nothing to do with bananas. These are very strong marks and easily protected.  Suggestive marks are marks that suggest a product characteristic but don’t describe it.  QUICK N’ NEAT for “pie crust” and GLANCE-A-DAY for “calendars” are examples from the USPTO. Suggestive marks are almost as strong as the first two categories.

Descriptive marks are marks that do describe the product. A classic, that seems to appear in every phone book (you remember what phone books are … right?), is “Accurate Accounting”. That’s a very weak mark.  Probably utterly unprotectable or only protectable with a lot of proof that you are widely known under that mark. The USPTO trademark booklet gives us examples of CREAMY for “yogurt” and WORLD’S BEST BAGELS for “bagels”.  Lastly, Generic marks are words that simply mean or have become to mean the product themselves and can never be protected.

In our world of book publishing, series titles are trademarks whether we realize it or not.  I’ve had amusing arguments with authors where I asked about their trademarks and was told that they don’t have any … even as I was looking at the series title on the cover of one of their books.  But where do they fall within the spectrum of marks above?  Sometimes they can be weak if not well chosen, from being too descriptive. A series title like “A Bodkin Nettlesworth Mystery” is going to be easy to protect.  But a series title like “Valkyries In Hell” is going to be weak, as its either descriptive or even generic.

Descriptive as mentioned is hard to protect without a lot of proof of existing recognition in the market.  Lucasfilms’ “Star Wars” ® is an example of a descriptive mark that was protectable because of its rather obviously large amount of market recognition.

How To Clear a Mark?

Clearing a mark means to ensure that you won’t infringe another’s trademark rights with your use. Trademark law works in the United States on a principle of first in time, first in right.  In other words, the first person to use a mark has priority.  (With some caveats on geography that we won’t discuss). So how do we find out whether someone else is using that mark?  Aye, That’s the rub. It is impossible to ever perfectly clear a mark without a literally infinite expenditure of time and money. Just doing a search on the internet search engines is not enough. Frankly, its not even a start. There are commercial firms who will for a fee dump out their databases of state and federal trademark registrations, corporate filings, advertising materials, phone books, etc. for a proposed trademark but then that dump of data has to be reviewed closely by someone who knows what they are doing and each potential conflicting mark evaluated.  For an international company that is proposing to clear a new mark that may be used globally, the costs of a trademark search alone can be millions.  I know, I’ve seen the invoice. Something far less ambitious can still cost hundreds of dollars in search firm fees and attorney time.

So one has to decide how much money the mark is going to represent in revenue and decide when that revenue needs to be protected by due diligence in clearing your mark.

Do I Need to Register My Trademark?

In the US, trademark rights are created by using a mark to sell goods or services or offer them for sale in commerce. Registration is not required.  A mark that is used within a single state can be registered at the state level but that provides very little additional protection and only a limited amount of notice to others.  Marks used in interstate commerce can be registered with the USPTO which provides a lot more benefits in statutory rights (e.g., it’s the only time you use the circled R mark) and a lot more notice to others. Registration cannot be made of any generic mark obviously, and the USPTO will reject marks it considers descriptive unless provided with compelling evidence that the mark is already widely recognized.  Registration costs in the low thousands of dollars in attorney fees and USPTO fees. The USPTO charges fees for each mark for each category of goods or services in which you are registering the mark. So I recommend that a business decision must be made on how important the mark is, what it would cost to register and how much business revenue is protected by a registration.

At a minimum, include in your rights notices that you are claiming a mark and who owns it. After the copyright notice, include something like “’A Bodkin Nettlesworth Mystery’ is a trademark of A. Author”. Using the parenthesis “TM” or superscript TM on the cover will probably be unattractive but it could be done on the title page at least once.

The more important question is who owns your trademarks?  This is where some of my frustration resides in the publishing business.  Traditional publishing houses’ contracts are very uneven in whether they treat the issue at all. Some don’t discuss it, and most are ambiguous at best.  And what happens if your book series’ title was chosen by your editor, if you get the rights back on the copyright of one or more books, do you also get the trademark? If not, will you have to omit the series title from it when you arrange independent publication?

Infringement of trademarks is something I want to address in a later article.

Robin D. Roberts

UPDATE First chapter of what will become a shared world series up at Mad Genius Club.  Elf Blood, Free Novel, Chapter One.

61 thoughts on “Tradition & Trademarks — A Guest Post by Robin Roberts

            1. What? So I stole a “Californians” light bulb joke …

              How many Daleks does it take to screw in a light bulb? One million to conquer a race that can climb a ladder.

              I got thousands of them.

  1. Mr. Roberts, I was under the impression that a ‘trademark’ was something that generated revenue – i.e. was a recognizable income stream for a business in its own right. For example, Burger King might claim that to be the case with its ‘Whopper’ burger, but how would an author claim that for a series title when he’s actually deriving income from the individual book, not the series as a whole? If someone wants to order ten burgers at Burger King, they can order ten Whoppers and be immediately understood; but no-one orders ten separate volumes of (for example) ‘the Darkship series’ (not least because Sarah hasn’t written ’em all yet!) by saying, “Give me ten Darkships.”

    Am I making sense? Is this a valid concern?

    1. Sure, you make sense but there is no requirement that a mark be limited to an individual item. Much as Chrysler has a trademark in “Jeep” as well as in “Grand Cherokee”. A book series title works as a trademark in that it informs the consumer that a particular title comes from a particular author and belongs in a group of books of common theme, setting, etc. which are valid purposes of a trademark.

      1. It sounds as if you are saying that, in Sarah’s case, both the title “Darkship Theives” and the series identifier “Darkship” would be seperate trademarks and that the series identifier would be more important.

          1. Ok, let’s use another series then… John Ringo’s “Legacy of the Aldenata” in which “Aldenata” is identified as a specific race of beings…
            Or to use a more common term, his ‘Looking Glass’ series, where looking glass is identified as a mirrorlike portal…

  2. Thanks for this information. I was wondering how James Cameron got away with ripping off of Nickelodeon with the “Avatar” title.

    1. Maybe I should have written more about titles and the intersection of copyright and trademark law but I was distracted by a picture of a pug in a tutu. And I was putting off infringement as a topic.

      Copyright does not protect short phrases and titles. But trademark law can. One isn’t going to get away with publishing a SF novel titled Star Wars today. Not because Lucas published a novelization of his film script in 1976. But because Lucasfilm produces a line of books under the mark.

      Another quirk: trademarks do not “expire” like copyrights (although registrations do if not renewed), so long as they are still in use – which means that the goods or services are still being offered for sale under the mark. You gain and keep rights in a mark by using it in commerce.

  3. Thank you for this. Enlightening and frustrating. I’ve written an epic fantasy riff on the first couple of the old Wizard of Oz books. While the individual titles are unique, I’m calling the series the Legacy of the Oz. I had assumed (yes yes, I know, make an ass out of u and me) that since the originals are now public domain I was safe in using Oz in the series name. Now I’m going to have to investigate whether I can still do that.

    I’m also now wondering if I can use the word “Oz” in the body of the story as well. If it turns out I’ve wasted all this time I might just take my laptop out to the middle of the street and set it on fire.

    1. Well, a quick search of the old Inner-tubes shows just what I suspected, about a billion trademarks of Oz. Everything from farming equipment to nautical photography to chemical supplies. I wonder if how copyright works when so many use the same one for so many different things at the same time. Or maybe it would just be easier to change Oz to Awz. Still thinking about setting stuff on fire.

        1. See, thing is in the story the Oz are a super advanced alien race that created the pocket dimension/world she ends up in. They’re long gone by the time the story starts, but the world is named after them.

          Don’t know how neurotic I am, but the thought having potentially wasted all this time makes me want to go down to the nearest bar and pick a fight. Punching obnoxious drunks has always been a great way to relieve stress.

              1. Somebody could probably make a fair chunk of change by designing and marketing a punching bag that made the proper sounds when you hit it. If you bought the deluxe model maybe you could program it for the type of person you wished to be hitting, that way it could make the proper retching sounds for a good body combo when programed for drunks.

          1. I believe it is okay to refer to the Land of Oz in the text, just not in the title. Certainly Gregory Maguire did — and a quick check reveals that one of his books was titled Out of Oz, certainly indicating the Baum estate does not control the usage.

            Prudence suggests a title theme for the series and individual books which does not risk confusing purchasers, if only to avoid engendering hostility from those who mistake your books for entries in the original series (do not be confident that back cover disclaimers or even introductions and acknowledgements will suffice to alert readers to the difference.)

            1. L. Frank Baum’s Oz is an odd duck given its mixed copyright status. Amusingly an important Seventh Circuit case on derivative works in Copyright law relates to the film.

              1. Would be interested to hear what you think of the copyright status of Lovecraft’s works…

                1. Works published before 1922 will be in public domain. The bulk of Lovecraft was published after 1922 and would have to be researched title by title (which someone may have done, I have not searched) to determine status which depends on whether registration was renewed.

                  1. From what I understand, the original versions, their copyright belonged to the various magazines and was never renewed (mags went out of business before renewal came up and Lovecraft wasn’t there for the rights to revert to)
                    Arkham House claims copyright to them but researchers have said that Arkham House’s copyright only extends to their ‘edited’ ‘corrected’ versions (which in some cases made minor changes)

      1. Notice that trademarks, unlike copyright, are not universal. Someone else can use your trademark in a completely different arena. For instance, UPS has the color brown trademarked for the priority shipping business. If you are in any other branch of commerce, use all the brown you like.

  4. I thought that the laws had recently changed, and that ‘first to trademark’ was now the law? or is that only patents?

  5. Nice intro to the topic, Robin. Thanks.

    It might have benefited from examples of how the effort to protect trademarks has played out. Most modern consumers do not realize that “Aspirin” is a classic instance of failure to protect a mark, nor that the ubiquitous 70s’ gag “No Coke; Pepsi” reflect the battles to protect commercial marks. It is worth noting that “Coke” and “Pepsi” are marks while “cola” is not. People ought also consider that such brand names as Xerox, White-Out and Google are at risk of losing their trademark status even though they are strong marks, merely because the public uses those terms for any product of that sort.

    1. Thanks RES. Losing a mark to becoming generic can happen but the doctrines around that are complex and difficult to summarize. Authors should be in little risk of it. If you’ve a product mark in such risk, you’ve probably enough cash to pay for the fight. 😉

    2. “Aspirin” falls under the rule “don’t be on the losing side of a war.” It was one of the terms of World War I, that they lost it.

  6. “Aspirin” became generic in the US (and much of Europe) for an even weirder reason than failing to protect a mark. That trademark was forfeited as part of German war reparations after World War I. But “Aspirin” remains a registered trademark in quite a few countries.

    1. A lot of odd events in IP law revolved around WWI and seizures of German patents, including litigation over DWM’s patent on pointed bullets (“spitzer” bullets).

      1. Was that a patent on the shape of spitzer* bullets or just the name ‘spitzer’?

        *which WP wants to change to spritzer, the only thing I can think of spritzer bullets being good on would be vampire’s when they were preloaded with holy water.

  7. Quick question – if I make reference to a title of another book in a story I’m writing, am I violating any trademark laws? In this particular case, I’m including the entire title of the book, and it’s referenced numerous times in the course of the work. (As being a highly desirable reference work, not that it’s important to the question…)

    If anything, I’m hoping it would drive sales of the book, (which I didn’t write or have anything to do with) because people might go “Hmmm.,… I wonder if something like that is for sale on Amazon?”

      1. Thank you!

        I was pretty sure it was okay – but these days it doesn’t hurt to ask experts. (with ‘expert’ defined as “someone with more experience than I have”!)

        1. Even if the title of a book was a trademark, which is rare, you can refer to it. Just as I can refer to a “Volkswagen” when doing a review, or even in my car repair shop ads “We service and repair Volkswagen …” which don’t imply sponsorship or affiliation you don’t have.

          1. It is important to keep in mind the purpose of the Mark, which is protection of two interests: the markholder’s interest and the public’s interest.

            In the first instance, the interest of the holder of a Mark (e.g., the distinctive snack known as a “Twinkie”) to benefit from the distinctive identity of their Mark is served by assuring that they benefit from sales and promotion of their Mark. Their brand is protected against low price knock-offs that seek to exploit the product identity that the markholder has sought to develop. A reference to another book on the cover of your own book might not violate the markholder’s rights so long as it does not represent your book as part of the referenced series. (Harry Potter In A Size 2 would probably be okay for your anthology High School Witches but not for Transvestites of Hogwarts.)

            The public’s interest is served by encouraging markholders to develop and improve their product in order to maintain the value of their Mark (consider Hyundai) and to ensure that consumers are protected against knock-offs — cheap imitations that do not have the quality of the markholder’s product (e.g., Rolex watches sold in Times Square.)

            Any use of a Mark that encourages consumers to seek out and purchase the actual product is unlikely to prompt legal action (ref: James Bond’s Aston-Martin, specific vodka or Walther PPK) and even defamatory reference is unlikely to be actionable (Bond breaks a bottle of coke over Goldfinger’s head, looks at the shattered glass and observes “Normally I prefer Royal Crown.”) This is part of why product manufacturer’s pay to have their products placed in movies, such as E.T.‘s use of Reese’s Pieces instead of M&Ms.

          2. Thank you, sir! I feel much better now about what I’m doing with book titles…

            (Nothing naughty or untoward, I assure our wonderful hostess.)

  8. I had been trying to remember the example that I had had of an author registering the name of a book series (other than Lucasfilm …) to share with you. I was at a used bookstore in our area today and stumbled on it. Here’s the entry from the USPTO database:

    Goods and Services IC 016. US 002 005 022 023 029 037 038 050. G & S: Series of science fiction books; magazine stories, featured in publications of others, in the field of science fiction. FIRST USE: 19951115. FIRST USE IN COMMERCE: 19951115
    Mark Drawing Code (1) TYPED DRAWING
    Serial Number 75725418
    Filing Date July 6, 1999
    Current Basis 1A
    Original Filing Basis 1A
    Published for Opposition July 25, 2000
    Registration Number 2395319
    Registration Date October 17, 2000

    Attorney of Record JONATHAN B. HUNTINGTON
    Type of Mark TRADEMARK
    Register PRINCIPAL
    Affidavit Text SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20100930.
    Renewal 1ST RENEWAL 20100930
    Live/Dead Indicator LIVE

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