Trademarks

Who Says I Can’t Use Trademarks In My Fiction?


One of the most common questions I hear when fellow writers learn I am an intellectual property lawyer is whether or not they can use trademarks in their fiction. When the anesthesiologist murders his wife, can he mix a crushed assortment of Xanax, OxyContin, and Tylenol into her Nyquil or must he stir a painkiller cocktail into her nighttime cold medicine? Can their earth mother protagonist Xerox her bulletin board advertisement – chanting woman with goat seeks room – or should she make photocopies? And what about books set in the future, where inevitably certain trademarks will have gained generic status by the nature of how the public uses the mark? How do we navigate those trademark issues in our books?

As writers, we like to liven up our descriptions and stories with real brand names and trademarks – the germophobe who wears Playtex gloves in public or the artistic gardener creating topiaries with a Weed-Whacker. Specificity creates descriptive prose and better mental images of our characters. But who wants to spend precious writing time seeking permission to use trademarks in their manuscript? Or worse, be on the receiving end of a lawsuit? Fortunately, as a general rule, we are free to use trademarks in our fiction without the risk of being sued if we follow a few basic guidelines. If not, we might find ourselves subject to claims of trademark infringement, dilution, tarnishment, or even defamation.

 

Trademark Primer

Before we examine these guidelines, let us have a short primer first.

Usually when we think of trademarks, brand name products come to mind, like Velcro, Vespa, or Valium. These types of trademarks are generally what we sprinkle through our creative works. But a trademark can also be a phrase, symbol, logo, design, or shape – like the Michelin Man made of tires, or the plume of a Hershey’s Kiss, or the catch phrase “Where’s the beef?” Just about anything qualifies as a trademark if it identifies a product or service in the marketplace and distinguishes the source of that product or service from other sources.

To understand what basic guidelines to follow when using trademarks in your great American novel, it helps to consider what rights come with a trademark so you can steer clear of infringement.

 

Trademark Infringement

Trademark rights allow the owner to prevent someone from using a trademark in a way that is likely to confuse consumers as to the source of the goods or services. During my earlier years as a trademark attorney, I participated in search-and-seizures of vendors hawking Rolex Watches and Gucci handbags as authentic merchandise. You get the principle.  It is misleading.

Normally, infringement is not an issue for writers. We are not selling Gucci handbags. The question we should ask is whether the use of the trademark in our manuscript confuses or deceives consumers as to the source, sponsorship, or affiliation of the book. If it does, then the use is unauthorized.

For example, if your character works at the ice rink and drives a Zamboni, use of the trademark Zamboni would not lead consumers to believe your book was created or sponsored by the Zamboni Company. You are not selling a Zamboni. You are merely referring to Zamboni’s own product, a Zamboni ice resurfacer. According to the courts this kind of use is considered fair. But, place the trademark on the book cover in hopes of boosting sales by implying the Zamboni Company endorsed your book, then you better check your mailbox for a cease-and-desist letter. Because Zamboni would likely think your use of the trademark constitutes infringement. If you are wanting to read more, here is an appeal case where David Balducci and his Snicker Magazine were held to infringe Anheuser-Busch’s Michelob trademarks with the use of a fictitious Michelob Oily advertisement on the magazine’s back cover (where ads are normally found, and thus held to be confusing to consumers and not parody or First Amendment Free Speech).

 

Trademark Dilution

The basic gist with dilution is keeping the trademark from becoming less distinctive. The classic example is using Xerox to mean photocopying. Or Google to mean searching the Internet. Or Kleenex to mean tissue. Using these trademarks in a generic sense makes them less distinctive and lessens the ability of a consumer to distinguish the goods or services from others because the trademark becomes synonymous with a general class of products or services. Words like aspirin, cellophane, kerosene, and thermos were once trademarks but now signify a general class of goods.

To avoid running afoul of trademark dilution, stay away from genericising a trademark. You would not say – she googled her crush. Instead, use the unbranded version – she searched his name on the Internet. Or, she used Google to search his name on the Internet. Do not ask to have a kleenex. Ask to have a Kleenex tissue. Or just a tissue. When you use a trademark, make it more distinctive (and less generic) with capitalization. Once the courts declare a trademark generic, use it as you wish. For example, “She wrapped the aspirin in cellophane and dropped it in the thermos full of kerosene.”

 

Trademark Tarnishment and Defamation

Portray a trademark in a negative light, destroy its commercial value, and you have tarnished the trademark. One of the most famous tarnishment cases I remember from law school was a claim by the Dallas Cowboy Cheerleaders that the porn movie Debbie Does Dallas tarnished their trademark when the porn stars wore Dallas Cowboy Cheerleader uniforms.

To avoid disparaging a trademark in your manuscript, do not depict a brand name, company, or their product in a highly offensive way. Instead, invent a fictional brand or company. Or, in the case of Debbie Does Dallas, use a generic cheerleading uniform. You will save yourself some legal hassles and have more fun creatively (plus you can disparage all you like). However, if the work is a parody or the statement is true, no matter how damaging (like the deaths linked to faulty ignition switches in certain General Motors cars), then you are clear to use that fact in your plot or mention it in your narrative.

 

Trademarks And Novels Set In The Future

When writing a story set 100 years in the future, the question arises about how to handle trademarks that, in a fictional setting, might have become generic.  If we had written a story fifteen years ago, we would be considering Taser being used as the verb to taser, or Google as the verb to google.  So how then, if we stay true to our fictional setting, do we use certain marks that will inevitably gain generic status in the future just by the nature of how the public uses the mark?  Do we risk violating the trademark laws and make the world as realistic as possible by writing about a villain who googled her victim’s address, then tasered him unconscious? Or do we stay true to the trademark laws and write about a villain who used a Taser to subdue victims that she stalked on Google?

The answer depends on how risk-averse the writer wants to be.

While companies hate genericization of their marks, most would be more likely to sue because of defamatory or infringing uses, like Burger King controlling humans through drugs in their burgers, or a deadly viral outbreak at Disneyland, or an alcoholic pilot constantly drunk on Budweiser beer.

To see how a few established authors have dealt with generic trademarks, I searched for random trademarks used in a few of my science fiction novels.  Snow Crash (Neal Stephenson) used formica in a generic, descriptive sense but Frisbee as a trademark for the flying disc sold by Wham-O.  Infected (Scott Sigler), however, uses Taser, Macintosh, Google as trademarks for the products. Infinite Jest (David Foster Wallace), where companies pay to subsidize the year, uses trademarks like Glad and Whopper as “the Year of Glad” or “the Year of the Whopper.”

Personally, I would be more inclined to not use a mark generically if a substitute existed.  Why take on unnecessary risk if the generic use of the mark is not germane to the novel.  That said, if a few trademarks used generically slip through the editing process, I would not start looking for a process server around every corner. The risks are relatively low a company would send a cease-and-desist letter or sue an author under those circumstances unless you are a J.K. Rowling-type author who would garner higher scrutiny from a corporation like Coca-Cola keen on monitoring generic usage of their trademarks. If you need more info on the subject, see my earlier Sidebar Saturdays article here.

 

A few side notes — Trademarks, along with patents, copyrights, and trade secrets, fall under the legal umbrella of Intellectual Property, which protects creations of the mind (as opposed to real property like a farm and personal property like a painting). Trademarks are registered with the United States Patent and Trademark Office and designated with the symbol ®. If the trademark application is pending, then the small superscript ™ is used. Owners use these designations to give the public notice that the brand name or logo is a trademark. There is no need for you to add these to the trademarks in your writing, however (and make your manuscript cluttered).

 

How are you using trademarks in your writing? Any questions or comments? We would love to hear from you.

 


Photo credit: by Micke Jakobsson | Deja Photo From Lens To Picture via VisualHunt | CC BY-NC-ND

And the obligatory legal disclaimer (fine print or heard at lickety-split speed) — All information provided in this article is general in nature and for educational purposes only. This article does not constitute legal advice or create an attorney-client relationship between you and me. I am a writer, who is also a lawyer, helping other fellow writers learn about publishing law. Consult a qualified lawyer in your jurisdiction for all legal opinions for your specific situation. You can read our full legal disclaimer below.  Or send an email to info@sidebarsaturdays.com.

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