Crossposted on According to Hoyt.
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