Welcome back to Ask #PubLaw – a summer series where authors can get publishing legal questions answered by publishing attorney, Susan Spann. Authors are invited to leave their burning legal questions in the comments and Susan will answer!
Today we look at part two of last week’s question:
How does an author (or artist) obtain a trademark?
Generally speaking, book titles cannot be trademarked, but series names, logos, publishing houses’ imprints, and other items which qualify for trademark protection can be registered (and protected) through the U.S. Patent and Trademark Office (or “PTO”).
PTO guidelines govern what can (and cannot) be trademarked. In the most basic sense 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.
As we mentioned last week, a trademark is “consumer shorthand” used to identify the source of goods.
The PTO has three basic requirements for registration:
1. “Proper subject matter” for trademark protection
A trademark must be a name, symbol, logo, or slogan-type phrase. Longer works, like novels, are protected by copyright, not trademark. Words or short phrases which don’t act as “consumer shorthand” to identify the source of the goods also do not qualify.
This is why book titles can’t be trademarked – they represent the book itself rather than the author, publisher, or source – and also why series names can be trademarked. Unlike a one-book title, a series name identifies a book as belonging to a specific group or class of goods created by a single source – in this case, an author and/or publisher.
2. Non-generic, non-descriptive status.
To qualify for trademark protection, a mark must be either “arbitrary” or “fanciful” – meaning the mark must either bear no relationship to the product it represents (think “Kodak” for film, or “Little Debbie” for snack cakes) or have only a slight, tangential relationship.
Marks which the PTO deems “descriptive” of the goods in question (for example, “Kentucky Fried Chicken”) cannot receive registration and protection as trademarks until and unless the owner can show at least five years’ continuous use and that the mark has acquired “secondary meaning” among consumers – essentially, proof that the mark functions more as an identifier of a specific source than a description.
“Generic” marks cannot be registered at all, and a registered mark will lose protection if it becomes generic – the process is called “genericide” and it’s what happened to “Aspirin” – a product many people don’t even realize was once a trademark of the Bayer corporation.
3. No pre-existing marks in the same or confusingly similar classes of goods.
The PTO won’t issue identical, or even “confusingly similar,” marks in the same “class” of goods or in related classes. For example, if you trademark “Awesomesauce” as a publishing house imprint, the PTO probably won’t issue “Awesome Sauce” or “awesomesauce” as book series trademarks (unless the same person owns them both). Someone could trademark “Awesomesauce” for pizza-flavored snack crackers, however, because consumers don’t usually mistake snack-cracker producers for publishers.
The PTO’s list of goods and services is long, and can be complicated, which is one reason why so many people choose to enlist the aid of a trademark attorney when filing trademark applications.
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!
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.
About Heather Webb
Heather’s historical novels have received national starred reviews, been featured in print media including the New York Times and the Wall Street Journal, and have been chosen as a Goodreads Top Pick in 2015. To date, her books have sold in a dozen countries. She enjoys helping other writers and may often be found tweeting helpful links, writing craft articles, or speaking about the industry and her love of books at conferences and retreats. For more information, see her AUTHOR page.
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