Trademarks are one of the most valuable business assets for creating recognition in the market place. For writers wanting to build a brand, trademarks must become a part of your brand strategy.
A few of my earlier blog posts have talked about the use of trademarks in fiction and how to avoid trademark infringement (here and here). For the purposes of this article, I will look at trademarks from an offensive standpoint – how to use trademarks as a tool to grow your audience through brand recognition but also prevent unauthorized use by others hoping to ride on your creative coattails.
What is a trademark?
First, a short primer on trademarks.
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?” It can also be something that has gained notoriety in the marketplace – like a book series, a character, an author’s name, and even a signature. 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.
What can writers trademark?
If you think as a writer you have nothing worthy of a trademark, think again. Trademarks in the literary world stem from you, your books, and your brand.
As a general rule, and I say general because there are exceptions, titles for single works like books or movies do not meet the legal qualifications for trademark protection. I know it sounds somewhat illogical, but if the purpose of a trademark is to identify and distinguish the goods or services of one particular seller from another, then a single title under that framework does not achieve that standard because a book title is only descriptive of the contents of the book itself, not an indicator of the source of the book, i.e. who created the book.
However, when it comes to a book series that reasoning goes out the window. Once a title in a series gains recognition (usually through great success and wide distribution), buyers know the related works are derived from the same source. Think Harry Potter, Goosebumps, Idiot’s Guide, Chicken Soup, Twilight, and the Hardy Boys. All of these titles (or key words in the titles) have reached a sense of notoriety in the marketplace and are identified with an author or a publisher.
This does not mean that a single title can never rise to the level of trademark protection. Ah, the exception. If a single title achieves great success and wide distribution so that it reaches a sense of notoriety or is broadly known in the marketplace, then it too can become a trademark. Think Gone With The Wind and To Kill A Mockingbird.
In short, books that become brands operate as an identifier of the source of the books offered by that brand and thereby are considered trademark protectable.
For more information on titles, see my earlier blog post: Trademarks For Book Titles – Can You Get One?
Pen names, Author Names, Author signatures
These maybe entitled to trademark protection provided it is distinctive or widely recognized in commerce. You see it all the time, actors, authors, sports figures, and other celebrities who trademark their names. In these instances, the name is related to well-known goods and services in the market place, their brand.
If a character reaches a level of notoriety such that the public would associate the character with an author or publisher – like Jack Reacher, Harry Potter, Mickey Mouse, or any of the various Marvel heroes that are exhausting the silver screen these days – the character can be protected by a trademark.
See my earlier blog post for more information about legal protection for fictional characters.
If you have a domain name that identifies a product or service used in commerce you can register the domain name for trademark protection. For example, domain names using Harry Potter would be protectable by J.K. Rowling. Likewise, domain names using Fifty Shades of Grey would be trademark protectable by E.L. James.
Book related merchandise also reaps the benefit of trademark protection. Typically a book title, character, or the author’s name that has trademark protection can be used as a trademark on merchandise that stems from the book. Martha Stewart, Harry Potter, The Cat in the Hat, Snoopy are good examples of names, titles, and characters that function as trademarks on products other than the related books or images/brands. Merchandising rights can be significantly more valuable than the book or movie itself – Harry Potter and Star Wars are prefect examples.
If you want to trademark a single word, there needs to be something unique about the word in association with the goods. It cannot be descriptive of the goods. For example, lotus is not unique when used with flowers. It is descriptive. But lotus is unique and not descriptive when used with software. Same for the trademark Apple. Goosebumps is another good example. The word is used in the various titles of the children’s horror series by R.L. Stine. In 2003, the publisher of the series and owner of the merchandising rights, Scholastic Publishing, paid $9.65 million for the trademark and all other rights to the series. For more information about single word trademarks, see my earlier post — Cocky: One Writer’s Adjective, Another Writer’s Trademark.
Trademark registration benefits
Besides helping to build a brand, trademarks also help increase the value of your business and expand your intellectual property portfolio with a series of rights.
- Trademarks grant you the right to use your trademark nationwide and in turn, prohibit others from using the same or similar trademark in a way that is likely to confuse consumers as to the source of the goods or services. During my earlier years as an intellectual property attorney, I participated in search-and-seizures of fake Rolex and Gucci watches. You get the principle. It is misleading. Trademarks help prevent this by giving you the right to bring an action in federal court should you not be able to amicably resolve an infringing act via negotiations.
- A federal trademark can entitle you to treble damages, attorney’s fees, and an injunction of the illegal conduct. I often see lawsuits against domain squatters hoping to cash in on domain sites related to popular books. Domain squatters will register for a domain using a well-known term or trademark then attempt to charge the author a high price to transfer the domain. For example, a slew of Harry Potter domains were held to infringe the Harry Potter trademarks and transferred to J.K. Rowling (without having to pay the squatters).
- If you use your trademark for five consecutive years, you can file an Affidavit of Incontestability with the trademark office that allows your trademark to be almost incontestable. An incontestable mark is immune from most challenges which means the normal defenses to trademark infringement are eliminated, all except things like the registration was acquired under fraudulent conditions or the mark has become the generic term for the goods (like Aspirin or Band-Aid, see my earlier post on generic trademarks for more information).
- If you want to obtain an international trademark registration, you can use your federal trademark registration as the basis for the foreign registration.
- Your federal trademark allows you to request the U.S. Customs Service to block the importation of an infringing foreign product bearing your trademark.
- And of course, you earn the right to use the ® symbol with your registered trademark. You can use the ™ symbol until the trademark application is final.
How to register a trademark
Once you decide you have a valuable asset worthy of trademark protection, here are three steps for obtaining a registration.
- Conduct a preliminary clearance search on the U. S. Patent and Trademark Office (USPTO) database to confirm you mark is available. This serves two purposes:
- To prevent you from investing time and energy registering a trademark (and building a brand around it by using it in commerce) that has been registered by someone else. A preliminary search tells you whether conducting a full trademark clearance search is appropriate and whether to proceed with a trademark application. Basically, it is a cost-protective method to manage the risk involved in adopting a new mark. A more comprehensive search includes state trademark records, business directories, media databases, trade directories, domain name registries and other sources.
- To prevent you from receiving a nasty Cease and Desist letter from a lawyer representing the owner of the trademark who claims your use of their trademark in commerce is infringing.
- Register you mark with the USPTO. While you do not have to register your mark in the US to receive protection (called a “common law” trademark), the best way to protect your brand is to formally register the trademark with the USPTO so you get the benefits listed above. You can file the registration yourself, use an online service, or hire a trademark attorney.
- The benefit of a trademark attorney is the experienced feedback on the clearance search and level of risk should there be any conflicting trademarks. An attorney will also be able to easily complete the application and address any complications raised by the USPTO examiner during the application process.
- The benefit of filing the registration yourself is you save money but it can be a complicated process. The forms are fairly self-explanatory and there will be certain filing fees to pay. However, often the USPTO examiner will raise objections to the registration that you must understand, respond to, and overcome before the registration is granted. That is why a trademark attorney is beneficial. Registrations filed by trademark lawyers are also more likely to be approved than self-prepared applications. If you want to file the registration yourself, here is a link to the USPTO with great information that will help familiarize you with the registration process.
- The cost of registration depends on whether you file the registration yourself or via a trademark attorney. Here is a handy chart from 2018 with guesstimates depending on which route you take toward registration. In general, the cost can range from $225/class of goods for self-filing to $2500 if you are using a trademark attorney. There are 45 different classes of goods. A typical trademark application will claim between 1 – 3 classes. For example, the title for a paper book and eBook series would be registered in Class 16 (paper goods) and Class 9 (downloadable content), respectively.
- Once a trademark application is filed with the USPTO, the registration process takes about nine months to a year or more. Part of the registration process requires the examiner to publish the application so others might have time to oppose the application. If no opposition is filed within a limited amount of time, the registration will be granted.
- Mark your trademark, use it consistently, and comply with the renewal requirements. A trademark can be valid forever as long as the trademark has been used continuously (i.e. not abandoned), and is periodically renewed.
- As I noted above, use the ® symbol with your registered trademark. Use the ™ symbol until the trademark application is final. The symbol ® is not required but highly recommended.
- Marking puts the public on notice the trademark/brand is protected by a federal registration and dictates the type of damages you may receive from an infringer should you sue (and win).
- There are ongoing maintenance fees to be paid and renewal forms to be submitted if you want to keep your mark valid and enforceable. Check here and here on the USPTO website for more information on renewals and maintenance fees.
If you need more information, check out these articles about trademarks for writers:
Trademarks for Creative Professionals by Kathryn Goldman
Trademark Basics by Lloyd J. Jassin
Registering Trademarks by Nolo
How Do I Renew My US Trademark by Nicholas Wells
Legal Disclaimer: This information is provided for educational purposes only. Consult a qualified lawyer in your jurisdiction for all legal opinions for your specific situation.