Trademark: Let’s Meet Copyright’s Half Sister

by | Nov 28, 2014

By Helen Sedwick

Suppose you come up with a shortcut to best-selling success. You analyze the top-selling dystopian series and write a book using similar settings, structure, characters, and themes. You don’t copy the original, merely incorporate generic elements not protected by copyright. Then you create a cover that looks similar to the best-seller’s. Same fonts, same imagery, similar title. You want readers to get the message that your book is just like their favorites.

Copyright problem? Probably not, if the new work is original.

Trademark problem? You bet.

Many writers (not to mention lawyers) are befuddled by the distinction between copyright and trademark. Both are forms of intellectual property, meaning they are creations of the mind, not the hand. They share legal terms such as infringement, fair use, and registration. But some creations are protected by copyright law, others by trademark, and some by both. No wonder we are confused.

Here’s a Quick Primer


Copyright: A creation is protected by copyright automatically as soon as it is fixed in a tangible medium, such as a piece of paper or a hard drive. Even if the creation sits in a desk drawer, never seeing the light of day as a book, the creator owns it (unless it’s a work-for-hire which will be the subject of another post). The creator has the exclusive right to publish, display, record, license, modify, commercially exploit, or even destroy the work, subject to the Fair Use exception.

Trademark: Creating a trademark is not as simple. A trademark is commonly known as a brand name, like Coca-Cola or CitiBank or Costco, although it may also be a logo, slogan, décor, packaging, or anything else which is associated with a particular product or service in the minds of consumers. It is created only by being used in the market. If you create a product, give it a brand name, but stick it in a desk drawer instead of marketing it, you would not have a trademark in that brand name no matter how brilliant.

So copyright law protects the contents of your book, and trademark law protects the brand you create by marketing yourself and your work.

How Are These Sisters the Same, But Not the Same?


Infringement: Using a copyrighted work or a trademark without authorization may be infringement, the word is same as is the potential liability including injunctions, damages, and attorneys’ fees. In copyright, the mere act of copying someone’s work is infringement. Trademark infringement requires more; the unauthorized use must create a likelihood of confusion as to the origin of the goods or services, something much harder to prove.

For example, when Jim Henson Productions introduced the Muppet character Spa ‘am, Hormel, the makers of the meat product SPAM, filed suit claiming trademark infringement and dilution. They called the puppet a “grotesque and noxious-appearing wild boar” that is “evil in porcine form.” Henson Productions won because the court found there was no likelihood that consumers would think the fuzzy puppet and the processed meat came from the same company.

What is trademark dilution? Under a relatively new law, the owner of a famous trademark may bring an action to stop any use that blurs or tarnishes the mark whether or not there is confusion in the marketplace. For instance, if someone came out with Johnson & Johnson cigarettes, you can bet lawyers would get right on the case. ToysRUs successfully brought a dilution claim against adultsrus.com, a porno site.

Expiration: The copyright in a work created in the U.S. today will last for the life of the author plus 70 years. Trademarks do not expire automatically. They last as long as the brand name is used in the market and has not gone generic. Many common trademarks are over 100 years old, including John Deere, Goodyear, and Campbell’s Soup.

Fair Use: Writers often ask me if they can mention a brand name in their work, such as having their characters drink Coors beer while wearing Reeboks. Yes, you may mention trademarks if the use fits within the definition of Fair Use, with some limitations.

  • Use a light touch. Mention a trademark in passing, such as a character who claims to be vegan scrambling to hide a Whopper wrapper. Use only so much of the trademark as is necessary, and do not make it appear as if your work is somehow associated with the brand. I would not name a character Betty Crocker or Homer Simpson. Using a famous trademark in a title can be tricky. Your use might be parody or fair use, but run it past an intellectual property attorney before you release the book.
  • Don’t go generic. Don’t say your characters “googled” the new boy in town. Say they did a “Google search.” Companies, such as Google, are proactive about discouraging the use of their trademarks as generics.

Reputational harm: Just as you should steer clear of defaming people in your copyrighted work, avoid tarnishing or disparaging a trademark, particularly with food products. Many states have “veggie libel” laws under which you could be sued for stating a food product is not safe. Oprah Winfrey was sued by a group of Texas cattlemen after she said “Mad Cow Disease” had stopped her from eating beef. (She won.) I doubt many of these laws would survive a First Amendment challenge, but no one wants to be the test case.

You may use a trademark to make truthful statements, even if they are damaging. Sometimes trademark owners send intimidating lawyer letters or DMCA takedown notices, when their marks are used in unflattering ways, even if everything the writer says is true. If you find yourself targeted, consider talking to an attorney.

Writer friendly: A writer who understands something about trademarks has an additional tool to protect his or her creations.

  • Book Titles: A book title is not protected by copyright but may be protected by trademark law. The title to a series of books such as the For Dummies series, or a title of a single book that has become famous, such as The Da Vinci Code, is considered a trademark and will be vigorously defended. Should your title become closely associated with your book and your book only, you may have a valid, common law trademark.
  • Characters: Distinctive characters may be protected by trademark law. As you would expect, an advertising character such as the Pillsbury Dough Boy is protected, but so is Harry Potter. While no one has a copyright or trademark on the generic idea of a boy wizard, if you add the distinguishing traits of a lightning bolt scar and round glasses, you are into trademark territory.

A Few Other Tidbits

You do not need to use the TM or ® symbol when mentioning a trademark. The only time you see that is when a company is trying to remind the public that their trademark is not a generic name, such as Kleenex®.

You may register a trademark with the U.S. Patent and Trademark Office, but the process is more costly and complicated than registering a copyright. It may not be necessary, since a common law trademark exists without registration. If you think you have or will have a trademark worth registering, work with a consultant or attorney with experience in the area.

If you are going to self-publish under an imprint name, then you should do a trademark search before you adopt the name. I talk about choosing an imprint on my blog and in my book, Self-Publisher’s Legal Handbook.

Sedwick.HeadshotHelen Sedwick, is a Contributing Writer for The Book Designer. She is also an author and a California attorney with thirty years of experience representing businesses and entrepreneurs. Her latest book is Self-Publisher’s Legal Handbook: The Step-by-Step Guide to the Legal Issues of Self-Publishing.

You can find more information about Helen here.

Disclaimer: Helen Sedwick is an attorney licensed to practice in California only. This information is general in nature and should not be used as a substitute for the advice of an attorney authorized to practice in your jurisdiction.
 
Photo: bigstockphoto.com

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41 Comments

  1. Jeanne Valdez

    Trademark: Let’s Meet Copyright’s Half Sister-in–Law, We Can’t Make The Same Mistake A story that will be familiar to anyone who ever knew Sarah Palin. While at the 2004 Republican National Convention, a group of young and old conservatives met with Vice President Joe Biden in Washington, DC to discuss their own presidential ambitions.

    Reply
  2. Helen Sedwick

    Rick, Is the trademark office permitting you to register a book title as a trademark? Typically, they won’t accept book titles unless the tittle/trademark is part of a larger business or a book series.

    Reply
  3. Rick Gillis

    Hi Helen, Your guys at BookBaby sent me to you. Wow! What a font of information you are. Thank you for what you do! (Just downloaded your book, Self-Publisher’s Legal Handbook.)

    Q: My TM is currently in the Inspection/Objection period–which will expire in about 15 days–so I expect to have my formal, registered TM shortly. I want to publish my book w/the Registered Symbol on the cover in the next 2 months or so.
    I am under the impression I DO NOT have to file an Intent to Use (ITU) application but rather can go straight to the Statement of Use (SOU) application. Would that be correct? Should I send a copy of my completed book with the (R) symbol to the USPTO for confirmation of use?

    Reply
  4. Helen Sedwick

    James, Interesting question, especially with a made-up word. And it may depend on Germany’s trademark law. So it’s a little risky.
    If it were a common word, even if it were something such as Apple, that would be less risky.

    Reply
  5. James

    Hello, I was wondering what the trademark laws are around using a trademarked word (such as Fahrvergnügen – the only VW slogan) for a charachters name in a book/tv show?
    Thanks

    Reply
  6. Christopher

    Hello Helen,
    I’ve been in the process of writing a short story that uses characters from Peter Rabbit. I’ve learned that Beatrix Potter’s work fell into public domain in 2014, but I’ve also learned Frederick Warne & Co are ruthless with their Peter Rabbit trademarks.

    Can I get away with it as long as I don’t use anything trademarked in the title or anything for marketing? You mentioned using trademarks only in passing qualifies for Fair Use. So if a main character in a short story shares a name of a trademarked character, that’s a no-go?

    Thank you so much for your time.

    Reply
    • Helen Sedwick

      Christopher, You are treading into legally fuzzy territory.
      First, you are correct that even if the Peter Rabbit stories fell into the public domain, the characters may still be protected as trademarks. Trademarks don’t expire as long as they are used in the marketplace.
      However, fair use does protect “transformative” works; namely works that add significant, new, creative elements. What you are describing is similar to fan fiction.
      A court might decide your work is transformative (and therefore not infringing) or it may decide it’s infringing. I can’t predict which.
      And if Frederick Warne decides they are unhappy with your use, they are likely to send you a cease-and-desist letter.
      Some writers would take the risk, at least until they get a cease-and-desist letter. Other writers don’t want to take any risk. It’s up to you to decide what risks you can live with.

      Reply
      • Christopher

        Thanks Helen!
        That does sound risky. I’ll look into previous court rulings on fan fiction and transformative cases to see what I would be willing to risk (if anything at all). Thanks again for your response, I really appreciate it.

        Reply
  7. Iggy

    Hi Helen,
    I wrote and illustrated a children’s book that I am planning to self publish and distribute through iTunes and other digital media outlets. I want to make my book into a series and, eventually sell products using the logo I created for the book. I’m going to copyright my book, but is it necessary to trademark the logo I’m using for my books now? Or should I wait to trademark it when I’m actually going to sell a product with my logo? Thanks.

    Reply
    • Helen Sedwick

      Iggy, It depends on your budget. Registering a trademark costs at least $275. You can even register an “intent to use” a trademark before you use it, but that adds additional fees.
      Most writers don’t register their logos as trademarks because of the cost. Once you use the logo to identify your books, you will have a common law trademark interest in the logo whether or not your register it.

      Reply
  8. Mandi

    My mother and I are in the process of writing a children’s book. We are taking the photos ourselves. We have a collection of stuffed animals all from different manufacturers. The pictures are done in black and white and no tags are being shown. But we are still nervous about copyright issues. Is there a law out there stating that we cannot use purchased stuffed animals in pictures for books?

    Reply
    • Helen Sedwick

      Mandi, There is not an easy answer to this one. Buying a stuff animal does not mean you have the right to use the protected elements for another purpose, just like buying a copy of a book does not give you the right to make a movie of it. I wish it were that easy.
      They may be a problem if the stuffed animals have any elements that the manufacturer considers protected by copyright or trademark law. Those would be the distinctive elements, and not the generic elements. Generic elements would be something like the round belly and button eyes of a teddy bear. Distinctive elements would be the red hat and raincoat of a Paddington Bear. So the more plain and generic the stuffed animals, the less risk you are taking on, but there is still some legal risk.

      Reply
  9. James

    I’ve been writing a book for a while now and asked this elsewhere on the blog and was directed here. I surfed a bunch of articles here but never quiet saw the information I’m after.

    I’m writing a book that will be a history/critique/review of a specific genre of film and television. It involves trademarked characters as well.

    I hope to create a coffee table style book with reproductions of posters, promotional pictures and screenshots that span the genre on film from the 40’s to the present day. Some of the material, but not a great deal, falls outside the 70 year mark but I’m wondering if I need to track down permission for each image I want to use.

    Thanks for your time!

    Reply
    • Helen Sedwick

      James, Interesting and complicated question.
      First, a clarification. You cannot be sure an image is in the public domain unless it was first published before 1923. So the magic age is 92 years! A ridiculously long time, but that’s the current law. Many images may have fallen into the public domain even though they were published after that date, if the copyright was not registered or renewed. It would be an image-by-image determination.
      Regarding your use of the images, you have to assume they are still protected by copyright. You would need to get permission, unless your use qualifies as fair use. This post has a lot of information about fair use: https://www.thebookdesigner.com/2010/02/what-every-writer-ought-to-know-about-fair-use-and-copyright/
      Your question is not one that can be answered in a general sense in comments. You should consult with a lawyer or a rights specialist to determine if you need permissions.

      Reply
  10. Bob Blondin

    Hi Helen, great explanations for copyright and trademark issues. I am writing a children’s book and use the term ‘lucky charms’ a few times in reference to the cereal (trademark name – General Mills), and all in a positive sense. Example sentence: “Are we having lucky charms now, I’m hungry”. My question is ‘do I need permission from General Mills or does it come under the ‘nominative use trademark law’ (as per Marin Bookworks – Sheogorath). I have in fact requested permission but still haven’t heard back (been 2 months?). Please advise, thank you.

    Reply
    • Helen Sedwick

      Bob, Thanks for asking. Writers often wonder about this.
      If you are mentioning a trademark as an incidental a part of your story, you do not need permission. There is little risk that someone will think your book is made and sold my General Mills.
      However, writers have told me that some traditional publishers don’t want to take any chances with trademarks and take them all out. I think that’s overkill, but some companies are very risk adverse.

      Reply
      • Bob Blondin

        Thanks Helen. I heard back from General Mills and they have said NO, so I have rewritten lucky charms out and replaced it with my own made up cereal (a mixture of various cereals) and named it ‘lucky dust bunny cereal’ in the storyline. Do you think I will have a problem with that?

        Reply
        • Helen Sedwick

          Lucky Dust Bunny? No, I can’t see General Mills making a credible claim of trademark infringement against that name.

          Reply
          • Bob Blondin

            Thanks Helen.

  11. Kevin

    Hello, I have a quetion regarding the use of “Trademark” names in books and on covers. I am getting ready to self publish a book and I have a forward written by an NFL Star. He is currently playing for a team and graciously wrote a forward for my book. I plan on placing his name on the cover but wanted to add an accolade to his name since his name is quite a common name. Here is an example of what I will place on the cover…”Forward By: John Doe, NFL Superbowl Champion”. I wanted to see if you could shed light on whether I would run into any issues placing that on my book cover. I would think that it descibes what he has done and I would not be using the company names inappropriately. I also thought about citing this in my works cited page as proof of where this information came from and how this is not in-proper use of a brand name. If possible, please share your thoughts. Thank you

    Reply
  12. Meenu

    Very informative, Thanks for sharing…. I will visit again to check on some more articles

    Reply
  13. Carlyn Cade

    Thank you, Helen, so much for your answer to my doll copyright question. I really appreciate it.

    Reply
  14. Aleta K. Dye

    I notice that there are many books out there with the same titles but no similiarity in content. For myself, I wrote a novel, gave it a title, but wasn’t published until three or four years later. After it was published I read another novel with the same title, published after I had written mine, and after I had self-published, so the title was not known by any publishing companies. I certainly don’t intend to sue, but wonder if all of these works with the same titles could technically be sued for using the same “brand.”

    Reply
    • Helen Sedwick

      Aleta, It is unlikely any one author will have the right to stop the other authors from using the same book title.
      If someone owns a trademark, then the trademark owner may stop others from using the trademark in a manner that may confuse buyers. But book titles are almost never considered trademarks for the reasons you mention; so many books have the same or very similar titles. The exceptions to the rule are titles to book series (such as the FOR DUMMIES or HARRY POTTER series) or titles that are so well-known they have become associated with a particular book in the minds of consumers, such as The Da Vinci Code.
      And titles are not protected by copyright law, because they are considered to short to contain sufficient original expression.
      This is ironic, since it is so challenging to come up with a good title, but that’s the current law.

      Reply
      • Steven

        Read a reply dated1/10/15 @1:38P. Regarding trademarks my son is in the process of Publishing a 1st book of a 5 book series. Would you suggest the Master Series Title be Trademark registered? Did Jk Rowling and Dan Brown Trademark their Titles or is their protection legally understood through actual use?

        Reply
  15. Carlyn Cade

    Helen, thank you for your copyright information. I have a question though. I bought a doll “born” in 1963. I want to use her as a model in a book I’m writing. She would have a brand new wardrobe, which I have designed and made, and would be featured on almost every page and the cover.The company sold their business in the late 70’s, and I don’t know if the copyright was ever renewed after 28 years, or who has the copyright. I don’t even know, since I purchased her, if I need permission to use her in a book. Could she be in public domain now since 51 years have passed, or does she fall under the Sonny Bono law? How does the law read for stuffed animals or toys if you want to use them in a book? Since everything seems to be copyrighted, it’s hard not to be hyper about whatever you include in a photo.

    Reply
    • Helen Sedwick

      Carlyn,
      You ask some very good questions. I’ll start with the easy one.

      First, let’s assume the doll is protected by copyright or trademark law. Buying the physical doll does not give you the right to use it as part of another piece of art. The same is true if someone buys your book. They do not have the legal right to copy sections and incorporate them into another work. The exception would be if the use qualifies as “Fair Use.” Here’s a great post about Fair Use. https://bit.ly/1q2aJ9x

      For some eye-opening examples of Fair Use, search “Food Chain Barbie.” The artist, Tom Forsythe, created images that are disturbing or entertaining, depending on your tastes. Mattel sued him for trademark and copyright infringement. Forsythe claimed his use was a parody and therefore Fair Use. He won, but the parties spent millions in attorneys’ fees. Obviously, you want to avoid getting entangled in something that ugly.

      From what you describe, your use would not be parody, so it is less likely to be Fair Use. You might want to look at this discussion about a woman who had a project similar to yours. https://bit.ly/1xM4bQy

      So you have to consider whether anything about your doll is still protected by copyright or trademark law.

      Dolls, toys, and stuffed animals can be protected by both copyright law and trademark law. Toy companies are very aggressive about pursuing knock-offs and infringing uses.

      If you want to pursue this project, then it makes sense to research, or hire someone to research, whether the doll is still on the market and whether it was ever part of any copyright or trademark registration. An attorney or a research specialist should be able to help you. I don’t think this is a large research project. My guess is someone could get you some answers in a couple hours.

      Reply
  16. Helen Sedwick

    Here are some trademarks that have gone generic and anyone may use: aspirin, escalator, granola, heroin, thermos, yo-yo, and zipper.
    And those fighting “genericide” include Kleenex, Google, Frisbee, Baggies, and Breathalyzer.

    Reply
  17. Greg Strandberg

    One of the things I can’t help but think about with this article is Stephen King’s Dark Tower books. He really used “Someone Saved My Life Tonight” by Elton John a lot. I mean, lyrics here, and quite a few.

    Today I’m not sure you could do that. They’d probably charge him too much. But the title? You can use the title of a song…it just might not be as much of an impact.

    So in that regard, sometimes it might just be a good idea to rewrite that and not use it at all.

    It’s tough today – everyone wants their money.

    Reply
  18. Lorinda J. Taylor

    Re your section on book titles: I have in the back of my mind a novel that I want to write entitled “The Hard Bright Crystal of Being,” a line taken from a poem by Conrad Aiken. This poem, unlike some of his earlier works, is still under copyright. Does what you say imply that I could the use the title without getting permission to quote? I realize I would still have to get permission to quote if I wanted to use the poem as the book’s epigraph.

    Reply
    • Helen Sedwick

      Lorinda, Even when a phrase is short and perhaps not protected by copyright law, if it is as distinctive as this phrase, the copyright holder might assert some claim of infringement. And using it as a title is a commercial use, so the Fair Use exception is unlikely to apply.
      Whenever you borrow someone’s distinctive words for something as important as your title, it’s best to get permission from the copyright holder. A search of the records of the US Copyright Office will help you locate that person or company.

      Reply
  19. Greg Strandberg

    I thought ‘googled’ got added to the dictionary.

    Reply
    • Helen Sedwick

      It’s inevitable. The consequences of a very successful brand name.

      Reply
  20. Michael W. Perry

    Keep in mind that intellectual property laws are, of necessity, filled with grey areas that can make them complex and sometimes yield unfair results.

    Oprah won that mad cow case, in part, because she could afford smart lawyers. A small food blog might have lost or at the very least gone bankrupt defending itself. So, when you make decisions, keep in mind the resources you have to defend yourself.

    While corporate IP lawyers tend to be a nasty, threatening lot, there are occasional exceptions, such as those at Jack Daniels:

    https://mashable.com/2012/07/22/jack-daniels-trademark-letter/

    –Michael W. Perry, author of Untangling Tolkien (successfully defended in a copyright dispute)

    Reply
    • Helen Sedwick

      Michael, Very true. Not every company pursues infringement claim, and most send a cease-and-desist letter before they demand payments. I wish all corporate attorneys were as gracious as the Jack Daniel’s attorney.

      Reply
  21. Laurisa Reyes

    I’m so glad I started following this blog. I’ve been toying with the idea of trademarking my new tiny publishing co. because I publish not just my own books but also a few friends and relatives. I’ll look into it. Thanks for posting this.

    Reply
  22. Carolyn

    In response to: “Don’t say your characters “googled” the new boy in town. Say they did a “Google search.” Companies, such as Google, are proactive about discouraging the use of their trademarks as generics.

    Problem with this particular example is that the term “google” has made it into multiple established dictionaries as a verb. Is the company Google taking action on this, or allowing the term to enter the language unchallenged?

    Reply
    • Ben Lunt

      Isn’t the word ‘google’ a mathematical term identifying a ‘1’ followed by 100 ‘0’s? If it was, then the ‘Google’ company knew going in they were trademarking a term in to public domain. If I trademark the name of my new company ‘One’, just how much does my trademark affect other uses of the term? For instance, if my product is a superior, environmentally safe treatment to protect wooden decks, and people fall into the habit of declaring they have ‘Oned’ their back deck, it seems like something on a grammatical perversion, but if the meaning becomes immediately clear to those they are speaking to, is it truly incorrect? I am in the process of developing my own trademark at this time, and find there are pros and cons concerning familiarity of a trademark sound. It is a minefield and one must step carefully.

      Reply
      • Greg Strandberg

        How about Kleenex? Everyone in America uses that in lieu of tissue paper. When I moved to China, I had to get rid of that real quick – no one knew what a Kleenex was.

        Reply
      • Helen Sedwick

        Ben, The best trademarks are called called “fanciful” and are composed up made-up words such as Xerox, Zinga, and Clorox. But common words are often used as what are called “arbitrary” trademarks. For example, Apple.
        Choosing a trademark is an art. I wish you great success.

        Reply
      • Sheogorath

        Actually, no. ‘Google’ is a deliberate misspelling of the word ‘googol’, which is the mathematical term for a 1 followed by 100 zeroes.

        Reply

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