Ask #PubLaw: How Does an Author or Artist Secure a Trademark?

Today we welcome publishing attorney and mystery author Susan Spann back for another session of Ask #PubLaw – a summer series where authors can get publishing legal questions answered!

Today’s question and answer addresses:

 “How does an author or artist secure a trademark?”

This question referenced an original logo the author created, but authors can also trademark a series name (meaning the series title – individual book titles cannot be trademarked) or, in the case of independent authors who create small publishing houses and/or imprints, the publishing house’s name, imprint, and logo can also be trademarked.

By law, a trademark is a word, name, symbol (logo) or device used or intended for use in commerce to identify and distinguish the mark owner’s goods from those sold by others.

In English: a trademark is “consumer shorthand” to identify the source of goods.

In the United States*, trademarks are protected by both state and federal law. State laws differ with regard to protection and registration, and they don’t offer nationwide protection (or much protection over the Internet). When most people talk about U.S. trademarks, they mean a federal trademark registration with the U.S.

Patent and Trademark Office – the only type of registration that lets you use the registered trademark symbol [®] after the mark.

You obtain registration for your trademark by filing an application online with the United States Patent and Trademark Office (http://www.uspto.gov/) and paying the relevant application fees.

Anyone can apply for a trademark – U.S. citizens, foreign nationals, and entities like corporations and LLCs can all own registered trademarks.

The application itself is fairly straightforward. Section 1 asks for personal information about the applicant (that’s you). Section 2 asks about whether an attorney is filing the form, and if so, asks for the attorney’s information. Section 3 asks for information about the mark, to ensure that the mark is a proper subject for registration, and also requires the applicant to choose a “class of goods” the mark is used to represent and to attach a “specimen,” which means one or more images (in .jpg or .pdf format) showing the mark in use in commerce. Finally, Section 4 requires a signature and payment of the relevant fees (which are $275 per class of goods if the applicant has enough information to use the most complete filing form).

While an attorney is not required, many authors find benefits in hiring an intellectual property attorney to file the trademark application on their behalf. In addition to understanding the application itself and knowing about which classes of goods the application should include, a trademark attorney is often better equipped to respond to questions the PTO may ask during the application review and registration process. Many attorneys handle trademark registration on a flat-fee basis, which means you pay nothing extra if the PTO does have questions about the mark. That said, many people do apply for trademarks without legal representation – it’s mainly a question of your comfort level with the application and the process.

The two most common questions which arise from the filing process are:

1. How do I know whether my mark is a proper subject for protection? And

2. How do I choose the proper class of goods?

Since today’s Ask #PubLaw is already running long, we’ll finish the discussion by answering those last two questions next Wednesday, here at Between the Sheets!

Big thanks to Heather Webb for hosting me on Wednesdays this summer – and if you have a question about this or any other publishing or intellectual property-related legal topic, please ask in the comments – I’ll try to answer them all before summer is through!

*Apologies to the non-U.S. readers – most countries have trademark formalities similar to those in place in the U.S.A., but I’m not licensed to practice law in foreign nations so I’m forced to restrict my discussion to U.S. law.

About Susan Spann

Susan is a publishing attorney and historical mystery author. Her debut novel CLAWS OF THE CAT (Minotaur) releases July 16, 2013. When not writing or representing clients, Susan enjoys traditional archery, martial arts, horseback riding, online gaming, and raising seahorses and rare corals in her highly distracting marine aquarium. She still consumes books – almost as avidly as spicy Thai dinners. Susan lives in Sacramento with her husband, son, three cats, one bird, and a multitude of assorted aquatic creatures. She is a member of Mystery Writers of America, the Historical Novel Society and the Rocky Mountain Fiction Writers’ Association and is represented by literary agent Sandra Bond of Bond Literary Agency. For more information, contact her at her website HERE or on Twitter.