Author Branding 101: Trademark & Branding Toolkit

 
A great title can contribute tremendously to a book’s success and enhance your personal brand. But before blindly plowing ahead with the title for a book, it's a sound strategy to do a trademark screening search to ensure the title you've selected is legally available. Get it wrong, and an aggrieved trademark owner can remove your book from online stores using one of the online tools designed to take down infringing content. Worse still, it can spark costly and time-consuming trademark litigation.
 
In this article, I share valuable tips on how to determine the availability of a title, secure its ownership, and cultivate a memorable brand. Remember.  It's bigger than the book. It's a calling card. A branding device. It imbues everything you do with credibility.
 
Part I covers the basics, from what trademarks protect to how to avoid trademark infringement.
 
Part II focuses on how to protect a book title even without having a book! 
 
In part III, you'll learn how to do a DYI title screening search using the Trademark Office's free 24/7 online database.  While there may be trademarks not in the Trademark Office's database, it's a great tool for highlighting obvious conflicts -- exact and near matches for related goods and services. 

PART I
THE BASICS
 
What's a Trademark?

A trademark is a word or symbol that points to the manufacturer or sponsor of a particular product or service. It's also a badge representing the seller's reputation for quality and dependability. Just about anything that helps a consumer identify and distinguish one seller's goods from another can qualify as a trademark (or mark). Trademark law protects distinctive words, character names, pen names (John le Carré), symbols, logos (Star Wars), series titles (Harry Potter), slogans and tag lines, colors (Tiffany blue), alone or in any combination, and by implication. Even domain names may qualify, provided they function as a source (booking.com, amazon.com).

A service mark is a proper term to describe a trademark used by a service provider (Geico, FedEx, Twitter). Trademark is used here as shorthand for both trademarks and service marks.

Does Trademark Law Protect Graphic Designs?

Trademark law applies with equal force to visual design and graphic design. Trade dress, a subset of trademark law, concerns the overall look and feel of a product's packaging. It has been referred to as how products are "dressed up to go to market." Whether the yellow and black cover with a triangular-headed cartoon figure known as the Dummies Man or the color and shape of an Etch A Sketch, trade dress is protectable under the same general theory that protects trademarks.

How Do Trademarks Come into Being?

Trademarks are earned, not born. They come into being through actual use. The first to use and cultivate brand awareness earn the exclusive right to use that trademark. Unregistered marks are known as “common law” marks. While an unregistered mark may be protectable, the best way to establish priority in a trademark is through trademark registration. Registration confirms that the owner has, through actual use, acquired exclusive rights in a mark.

What is the Different Between Title Availability and Registrability?

While a book title may be available for use, it does not mean the title can be registered as a trademark. To establish ownership of a title, the mark must be distinctive and used for a series of works, and you must be the first to use the title. You must also comply with the Patent and Trademark Office’s strict application deadlines and legal requirements discussed later.

Can You Have a Trademark Without Registration?

Yes. While there are advantages to federal registration (e.g., evidence of trademark ownership and exclusive rights, it’s a public record, it gives you the right to use the ® symbol), unregistered or common law trademark owners can still pursue their rights in state and federal courts.

Are Single Titles Protected by Trademark Law?

Generally, a standalone title cannot be registered as a trademark. The Trademark Office's rationale is that a book's title identifies that specific work, and when that book falls into the public domain, the right to copy the book includes the right to call the book by the only name it has. There's one exception to the single title rule. A single title may be protected as an unregistered mark under unfair competition law, provided there’s sufficient proof it has become associated in the minds of a substantial number of people with a single source, and there’s a likelihood of confusion. Building what's called secondary meaning is both time and money-intensive. Proof of secondary meaning for literary titles requires evidence that the title has wormed its way into the public’s consciousness, which is a function of a mix of (i) long and continuous exclusive use; (ii) advertising and promotion expenditures; (iii) sales volume befitting a major bestseller, or in the case of film and television, significant box office receipts and ratings. Extensive evidence of cross-licensing and cross-promotion under the watchful eye of the brand owner, while not proof of secondary meaning, is evidence of it.

Case & Comment. In the case of The Book of Virtues, the originator of the term The Book of Virtues, an anthology of inspiring stories for children, sought to protect the exclusive right to use the unregistered mark. Simon & Schuster published the Book of Virtues in both hardcover and audiobook form. They sued Dove Audio which was planning to publish "The Children's Audiobook of Virtues" and "The Children's Book of Virtues," a print book. Dove raised a First Amendment “artistically relevant” defense. In rejecting the defense, the court wrote that Dove “deliberately gave its children's storybooks confusingly similar titles in a blatant and ill-conceived effort to piggyback on the goodwill associated with [the plaintiff's] best-selling title." The court ordered Dove to recall and destroy all inventory and awarded damages and profits. Simon & Shuster could assert a monopoly on the Book of Virtues title because the title had secondary meaning. Secondary meaning in a literary title occurs “where the title is sufficiently well known that consumers associate it with a particular author's work,” explained the court. The publisher produced evidence the book had reached the number one position on The New York Times bestseller list, sold 2.2 million copies, was advertised extensively, had been optioned as the basis of a public television series, and had other licensing deals in the works. The Children’s Book of Virtues was not a just single title but a source identifier. Brand imitation is another indicator of secondary meaning. When competitors seek to capitalize on a bestselling book’s title or its “look and feel” to increase their own sales, not only is it evidence of secondary meaning but evidence of likelihood of confusion.

Are Series Titles Protected by Trademark Law?

While a book title identifies a particular work, a series title indicates that each work comes from the same source. Sometimes series titles follow in a specific sequence (Harry Potter books). Other times they do not (Michelin travel guides). Court's reason that prospective purchasers associate future works in the series with the same source based on prior interactions and experience with the author’s work. A title must be used on at least two different works qualify. A "new and revised" edition does not qualify as a series work. Nor does an eBook and print book edition of the same title.

The Magic School Bus, a media franchise that began life as a series of children’s books, is an excellent example of how a bestselling series title presents itself. The words The Magic School Bus receives protection because it appears consistently on the cover of multiple books, where it floats above the ever-changing words in each installment in the series. It is displayed in large letters on the cover of each book and is set off in a different style font and color. The takeaway for those looking to launch a series (rather than clear a title for single use) is the importance of emphasizing the series title in a way that creates a distinct commercial impression from the rest of the title.

TIP. A unified “look and feel” across platforms and products (book, film, television, music, fashion, toy tie-ins) where a trademark is used enhances the strength, or protectability, of a mark.

Why You Should Care About the Lanham Act?

Section 43(a) of the Lanham Act is the Swiss Army Knife of federal unfair competition law. It is used for a wide variety of misrepresentations and false advertising claims. It’s commonly used as a cudgel to go after bad actors who attempt to pass off their goods as their competitors' goods or try to deceive consumers into falsely believing their goods have been approved or endorsed by others. It’s also used by celebrities (and their heirs) to fight against misleading commercial uses of names and likenesses (and sometimes voices, too) by others.

It provides:

    (1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which —

    (A) is likely to cause confusion, cause mistake, or deceive as to the affiliation, connection, or association of such person with another person, or the origin, sponsorship, or approval of their goods, services, or commercial activities by another person . . . shall be liable in a civil action by any person who believes that they are likely to be damaged by such act.

         15 U.S.C. § 1125(a)

False Suggestion of Connection

If there’s a likelihood a trademark owner will enter a particular market in the future, trademark law will prevent an unauthorized seller from entering that market and selling goods under a similar mark. The point is the likelihood of confusion, the test for trademark infringement is not a book-to-book or app-to-app analysis. The Wonderful World of Disney is also the wonderful world of reading, music, film, television, theater, video games, toys, hospitality services, and credit cards (Disney Visa Card). When Scholastic releases a Lego picture book, pairing a story with Lego’s iconic mini-figures, it’s a brand extension. When done without permission, it’s trademark infringement.  When done with permissions, it's merchandise licensing.

In a case involving the Ralph Lauren Polo brand, a court permanently stopped the unauthorized use of the name Polo for a lifestyle magazine. In granting the injunction, the court rationalized that both the magazine and Ralph Lauren’s Polo brand were associated with fashion, elegance, and affluent lifestyles in the public's mind. While you can write a book about Ralph Lauren and his fashion brand’s cultural significance -- even an amusing or entertaining one -- you can’t ride on Ralph Lauren’s goodwill or his coattails

TIP. If you have written a book that’s linked to your brand, you may be able to use that branding to stop the publication of a book or business that would be reasonably thought by purchasers to come from you or approved by you. Similarly, you can wrap your established brand or trademark around a book that you write, or commission someone to write, to extend your brand into the publishing space, and in doing so, make it difficult for others to free-ride on your goodwill by publishing a book with a confusingly similar title.

How Do You Know if You Are Infringing? 

The test for trademark infringement is deceptively simple. What is the likelihood a “reasonably prudent consumer will be misled about the true origins of a seller’s product or service?” The likelihood of confusion is synonymous with a probability of confusion. It’s a multi-factor analysis. Similarities in sight, sound and meaning, and the goods' relatedness are the key vectors in the trademark infringement analysis. Add to the mix the strength of the mark (discussed later), the cost of the goods, and several other factors, and you have the secret sauce of infringement analysis.

In addition to luring potential purchasers away from a competitor’s product by using a confusingly similar mark, Congress prohibits using a recognizable logo, design, name, or likeness to falsely suggest a connection or commercial endorsement – even in the absence of competition.

Determining if a Title is Likely to Infringe

When evaluating Trademark Office or internet search results, the three key considerations are:
      1. Has the mark been registered?
      2. How similar are the marks? 
      3. Are the goods or services related? 
You must evaluate the following factors which arise in every trademark infringement dispute:

                        Registration
Has the name or phrase been registered?  An important factor, if for no other reason than if they cared enough to register their mark, there’s a good chance they are prepared to protect it.

                        Strength of the Mark
Descriptive marks, which say "something about a product, its qualities, ingredients, or characteristics," are the 98-pound weaklings of trademark law. They are not protected unless they can distinguish one work from another. Many non-fiction titles simply describe the contents of the book they are associated with. They fall into the descriptive category. Generic terms are common terms that consumers use to identify specific things. Since they are essential in communicating information about particular goods (or services), a single manufacturer or seller can't monopolize them. The strongest marks are arbitrary (APPLE for computers) and fanciful marks (SPOTIFY). Since they bear no real relationship to the goods or services they are associated with, legally, they are strong and protectable. Next in terms of strength are suggestive marks (NETFLIX for streaming services, GLANCE-A-DAY for calendars). Suggestive marks require a leap of imagination to connect the mark to the goods. They are also considered strong marks.

                        Degree of Purchaser Care
It’s harder to deceive the buyer of an expensive coffee table book than the buyer of an inexpensive comic book purchased on impulse. The greater the cost, the more time the average consumer deliberates over a purchase. So they less prone they are to deception.   

                        Sold in Same Stores 
The likelihood of confusion diminishes if the goods are not sold to the same purchasers using the same trade channels. For example, because of the gulf between plumbing and publishing, there would be no likelihood of confusion between LITTLE PLUMBER liquid drain opener and LITTLE PLUMBER, a book on careers paths for little boys and girls. But there are exceptions to this rule. For example, if purchasers would expect a fashion brand like POLO to be associated with a lifestyle magazine for the horse country set, the difference in trade channels would not necessarily prevent confusion.

                      Common Terms in a Crowded Field
Extensive use of the same or similar mark by competitors is a sign of weakness, which means the word or phrase is afforded narrow protection. Minor differences in these marks are often enough to allow consumers to distinguish the marks and for competitors to avoid infringement. So, Runaway Bunny, Pat the Bunny, Peter Rabbit, Oswald the Lucky Rabbit, So Many Bunnies, Bunnies Love to Read, Attack of the Fluffy Bunnies, It’s Not Easy Being a Bunny, I am Bunny, and Bunny Williams [sic] Love Affairs with Houses, all live peacefully on library shelves and in Amazon’s database. 

                           Media Tie-ins and Cross Promotion
Merchandise licensing legally uses the name, logo, or image of recognizable properties owned by others to sell your goods and services. Whether wrapping tie-in art from the latest Harry Potter film around a young adult paperback, or a collaboration between Jerry Garcia’s heirs and Ben and Jerry’s ice cream, titles and personalities easily cross over from one medium to the other. If consumers would reasonably assume that JK Rowling or Warner Bros. gave permission to publish a Harry Potter mashup that takes place aboard the Starship Enterprise, but they didn’t, that’s a violation of both state and federal unfair competition law.

                        Copycat Design
It’s not just imitating a competitor’s brand name to gain an unfair competitive advantage that qualifies as trademark infringement; it’s mimicking the artwork, trade dress, designs, and logos to take advantage of another brand’s reputation and marketing efforts to sell your own goods.

Can Disclaimers Reduce the Likelihood of Confusion?

Disclaimer Alert! When it comes to the effectiveness of disclaimers, it’s decided on a case-by-case basis. While using a disclaimer is not a magic bullet, an effective disclaimer can help reduce the potential for consumer confusion. Legibility is critical. The clear and prominent use of the word “unauthorized” in a title or near a trademark on a printed book jacket is enough in some cases to dispel confusion. Fine print disclaimers are inadequate. Typeface selection matters. So does the contrast between the word “unauthorized” and the background. If you are using colored lettering, remember light/dark contrast is a key to readability. The term “unauthorized” in a light color on a dark background is difficult to read. Black text on a white background has the strongest contrast. Legibility varies depending upon where you encounter a book or other creative work for sale. Today, every book found on bookstore shelves can be purchased online. An “unauthorized” disclaimer on the cover of a postage stamp size book jacket residing on an Internet retailer’s website lacks the legibility of a book encountered in a bookstore.

Can a Publisher Be Sued for Trademark Infringement Committed by its Authors?

Although the Trademark Act does not explicitly address what’s referred to as secondary liability, a court can hold a publisher liable for an infringement committed by one of its authors under the theory of contributory liability. This would occur if the publisher knew or had reason to know the title infringed a third-party’s trademark rights and continued promoting and publishing the work.

When is Trademark Owner Permission Not Needed?  

Not every use of a trademark (or similar title) without permission is an infringement. There are many legitimate reasons to use a particular word or phrase in the title of a creative work that doesn’t have anything to do with trading on another party's goodwill, fame, or reputation. For example, words that merely describe the contents of a work receive no protection without proof that consumers associate it with a particular source. By source, the Trademark Act refers to both the source of the physical or virtual goods and the creator of the content embodied in those physical or virtual goods. Although a standalone title cannot be registered, it can be protected if the title attains secondary meaning (discussed later). Generic names (100 Best Science Fiction Movies) are not entitled to trademark protection.­­­­ 

Is Parody a Defense to Trademark Infringement? 

By definition, a parody must conjure up the original. However, since trademark law grants relief only against uses that are likely to confuse, a free speech-protected  parody must be “amusing, not confusing.” The more pronounced the parody, the less likely a court will find a likelihood of confusion. While there is no requirement that a cover carries a prominent disclaimer, the words “a Parody” on the cover of a book alert potential purchasers that the work is neither approved nor connected with the trademark owner. The challenge is there is no bright-line test to determine what constitutes a permissible parody. Humor is not an ironclad legal defense to either copyright or trademark infringement -- or, for that matter, libel. For instance, a florist's use of the slogan THIS BUD'S FOR YOU in an ad for fresh flowers was held by one court not to infringe on the plaintiff's well-known beer slogan (Anheuser-Busch v. Florists Assn. of Greater Cleveland, 603 F. Supp. 35 (ND Oh 1984)), the use of the phrase WHERE THERE'S LIFE . . . THERE'S BUGS for a combination floor wax/insecticide, was determined by another court to infringe the very same trademark. Chemical Corp. of America v. Anheuser-Busch, 306 F2d 433 (5th Cir. 1962).

Although commercial identity confusion is the most common form of trademark infringement, a non-competitive mark can also violate a famous owner’s trademark by diluting the distinctiveness of the owner’s trademark. Thus, Barbie’s Playhouse, the title of a pornographic website, was held to tarnish Mattel’s Barbie for toy dolls. Mattel Inc. v. Jcom Inc., WL 766711 (S.D. N.Y. 1998). Just to confuse matters, in Lucasfilm Ltd. v. Media Market Group, Ltd., 182 F. Supp. 2d 897 (N.D. Cal. 2002), the court held that a pornographic movie entitled STARBALLZ was a permissible parody of Star Wars and not barred under the Federal Trademark Dilution Act.

Similarly, in Barbie Girl (satiric song) v Barbie (the doll), the court held that it was unlikely that listeners would believe Mattel approved a satirical song that mocked its iconic doll (“I'm a blonde bimbo girl, in a fantasy world “).  In Route 66 (pornographic movie) v Route 66 (television program), the court held there was no way a reasonably prudent consumer would think . . .  Well, you get it.  

Does Trademark Law Protect Graphic Designs? 

Books, websites, and mobile apps don’t just speak with words; they talk to users with graphics and visual cues. If the cover of a book or other work uses the lettering, layout, or color scheme associated with an established brand or entertainment property to free ride on their reputation and marketing efforts, that constitutes trade dress infringement. The For Dummies instructional book series is illustrative of this point. Each book in the series shares the same overall look -- a yellow and black cover with a triangular-headed cartoon figure known as the Dummies Man and an informal, blackboard-style logo. Unless done under license or parody, copying these elements would invite a trademark and unfair competition claim.

CASE AND COMMENT. In the Merriam-Webster case, the dictionary publisher sued Random House after they renamed their dictionary Webster's College Dictionary to compete with the market leader, Merriam’s-Webster’s Ninth New Collegiate Dictionary. In what would be a short-lived victory for Merriam, the district court held Random House infringed Merriam’s trade dress, awarded over two million dollars in damages, and granted a permanent injunction. But on appeal, the court vacated the injunction and damages award. Despite the similarities of the titles (in different color letters) and red (in different hues) jackets, the court found no likelihood of confusion. The court premised the lack of confusion on the prominent use of significantly different logos, the publishers' names on their respective covers, and the different spines of the two books. Red was a standard color for college dictionaries - thus a weak source indicator. Since "Webster" and "college" were generic terms lacking secondary significance, both publishers had the right to use Webster and “college.” Merriam-Webster Inc. v Random House, 35 F.3d 65 (2d Cir. 1994).

Can I Incorporate Trademarks in the Body of My Story?

Yes, provided you do nothing to overtly mislead people about the work's source, content, or approval.  For example, suppose a character in a story is described as wearing a red jacket, white T-shirt, and jeans, leaning against a silver 1955 Porsche 550 Spyder while slipping on a pair of Ray-Ban sunglasses or tapping a cigarette out of a new pack of Marlboro cigarettes. In that case, no permission is needed from Porsche, Ford, Ray-Ban, Philip Morris USA, or the Estate of James Dean.  These are signs and symbols that permeate our culture.  The mental imagery – “Rebel Without a Cause” and “live fast die young” – has artistic relevance.  The slight risk someone might believe a trademark owner, or the Dean’s estate, endorsed the use would be outweighed by First Amendment interest in free speech. 

TIP.  You do not need to use the letter "R" in a circle ® after a brand reference in a literary work.   However, since trademarks are proper names, they should be capitalized (Nike sneakers) or set off in italics (Coca-Cola).     

Can I Use a Person's Name in the Title of My Book?
 
It depends. Provided a celebrity's name has some reasonable "artistic" relationship to the content of the work and is neither "explicitly" misleading nor a thinly veiled commercial advertisement, the slight risk that the celebrity's name might implicitly suggest endorsement or sponsorship may be outweighed by the public interest in free expression. For instance, the song "Bette Davis Eyes" and the film "Garbo Talks" are good examples of protected uses of well-known individual's names used in an "artistic" manner.
CASE & COMMENT: Renowned Italian filmmaker Federico Fellini's 1986 satire, GINGER AND FRED, concerned two retired small-time dancers known as "Ginger and Fred" because they used to imitate the well-known dance duo of Rogers and Astaire. When Ginger Rogers learned of the film, she claimed her right of publicity had been violated and that the movie falsely implied she endorsed the film -- a violation of Section 43(a) of the Trademark Act. Affirming the trial court, the Second Circuit Court appeals held that where the title of a film is related to the content of the film and is not a commercial advertisement for goods and services, the First Amendment's interest in freedom of expression will outweigh a well-known individual's right of publicity. The court further held that where a celebrity's name has at least some artistic relevance to the work and is not "explicitly" misleading, freedom of expression concerns will generally outweigh the likelihood of public confusion over the source of the work—Rogers v. Grimaldi, 875 F2d 994 (2d Cir. 1989).
The Rogers case acknowledges that books and movies are hybrid by nature -- a combination of art and commerce. While consumers have a right not to be misled, a title's "expressive element" may make it predominantly non-commercial and thus deserving of more protection.


PART II
HOW TO PROTECT A BOOK TITLE

How Do I Protect a Single Title?
 
The Catch 22 of series or continuity publishing is that the first title of a multi-volume series is not registrable as a trademark. So, how do you protect the first book in what you hope will be the next Hunger Games trilogy or Harry Potter-like series of fantasy novels? The solution is to file an “Intent to Use” application. While the first work in a series cannot be registered, the Trademark Office will allow you to file a trademark application on an Intent to Use or provisional basis. When the second book in the series is published, and a Statement of Use is filed, the Trademark Office will re-evaluate the application. While the Intent to Use application is pending, the application will block other later filed trademark applications for identical (or confusingly similar) marks for related goods. One of the advantages of an Intent to Use application is when you publish the sequel or prequel; the original filing date serves as the date of first use. That gives you priority over those who began using the mark after your filing date. A slightly different process is involved if you already use the mark for an established series. In either instance, you will need to publish book two in the series to show prior commercial use before obtaining a U.S. trademark registration.

TIP. Suppose you have written a book that’s an intrinsic part of your overall brand. In that case, you will want your book cover to reflect the look and feel of your brand, whether expressed by the logo and overall design of your website or design elements associated with your marketing. 

How Do I Protect a Series Title?

While the first work in a series cannot be registered, the Trademark Office will allow you to file a trademark application on an Intent to Use or provisional basis. When the second book – or other creative work -- in the series is published, and a Statement of Use is filed, the Trademark Office will re-evaluate the application. While the Intent to Use application is pending, the application will block other later filed trademark applications for identical (or confusingly similar) marks for related goods.  While you may file a limited number of extension requests, you must file a Statement of Use to perfect your Intent to Use application.  

How to Protect Fictional Characters Under Trademark Law

The Trademark Office allows registration of character marks and character names, provided they are used to identify the source of a series of creative works.  The best way to assert trademark rights in a series character’s name is to display it prominently on the cover, in a more oversized, bolder style of type and a different color from the rest of each title.  This can also be done by creating a logo design incorporating the character’s name or other distinctive elements. To the extent a literary character becomes associated with a particular producer or source, it can be protected under trademark and unfair competition laws -- even if the character is no longer protected by copyright. 

How Do I Protect the Name of My Company?

Before investing in the name for your business, you need to determine if someone is already using an identical name, or a confusingly similar one, for related goods or services.  If the name is distinctive (protectable) and unlikely to cause confusion with a similar name, it is registrable. Thus, the first step is a trademark availability search.  Start with the U.S. Patent and Trademark Office’s TESS database. If there are no obvious conflicts, we recommend using a professional trademark search firm to conduct a full search. Evaluating trademark search report results takes special skills. If your trademark attorney gives you the green light, go ahead and file a trademark registration application with the Trademark Office.  Remember to maintain your registration, including filing renewal applications at regular intervals.

Comment. A common misconception is that registering a corporate name with a state government creates trademark rights. It does not. A corporate name is just how the state identifies a business entity for internal administrative purposes. It does not necessarily mean the name is registered as a trademark or used in dealing with the public.   

How Do I Protect My Name or Pseudonym?

The Trademark Office allows registration of both actual names (Debbie Macomber, J.K. Rowling) and pseudonyms (Dr. Seuss aka Theodor Seuss Geisel), provided the name is used to identify the source of a series of books. When a bestselling author’s name is printed on the cover of a book jacket in letters bigger than the title, their newest book is promoted as their next book, and the author’s back-list has been promoted aggressively over an extended period, it’s a good indication that the author’s name is occupying top-shelf real estate in consumer’s brains and therefore has come to function as a service mark.

Establishing Ownership with Trademark Registration

Once you have selected your mark, you, or your attorney, can apply online at 
www.uspto.gov. First, you must determine in whose name to apply. Assuming your application meets the minimum filing requirements, it will be assigned to an examining attorney for review. If issues prevent registration, the examiner will issue an Office Action. An Office Action states the legal basis for the refusal, whether substantive, technical, or procedural. Common pitfalls include unacceptable specimens and unacceptable descriptions of goods. An example of a substantive refusal is that your chosen mark is confusingly similar to a registered mark or a mark in a pending application. Another common objection is the mark merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of the goods or services covered in your application. Refusals to register are par for the course. Cogent legal arguments can overcome some. Those with fatal flaws cannot. If the objection is minor, the trademark examiner may call you or send you an informal email requesting information. Priority is based on the application's filing date, not the date the registration is issued. Because trademark examiners cannot provide legal advice, the Trademark Office recommends that you use the services of a law firm familiar with Trademark Office arcana. If consulted early on, your trademark attorney can advise you if your mark is registrable and if it is, improve your odds of obtaining a trademark registration.

Keeping Track of Trademark Office Deadlines

A registered trademark can last forever, provided timely renewal applications are filed, and the mark remains distinctive for the goods or services it is linked to. The following is a brief United States Patent & Trademark Office overview on how to maintain your trademark:

For a trademark registration to remain valid, an Affidavit of Use (Section 8 Affidavit) must be filed: (1) between the fifth- and the sixth year following registration, and (2) within the year before the end of every ten-year period after the date of registration. The registrant may file the Section 8 Affidavit within a grace period of six months after the end of the sixth or every tenth year, with payment of an additional fee. The registrant must also file a Section 9 renewal application (Section 9 Renewal) within the year before the end of each successive 10-year period following the date of registration, or within a grace period of six months after that, with payment of an additional fee. Assuming the Section 8 Affidavit and Section 9 Renewal are timely-filed as indicated above, the registration will be renewed for a 10-year term. If the Section 8 Affidavit and Section 9 Renewal are not timely filed, the registration will be canceled. Registrations canceled due to the failure to file a Section 8 Affidavit and Section 9 Renewal cannot be revived or reinstated. 

Trademark Notices

A federal registration allows you to use the ® symbol. If your mark is unregistered, you may use a superscript ™ after the mark. While trademark notices are not legal requirements, they have legal significance. Like a "No Trespassing" sign, a trademark notice gives notice of your rights. That makes it more difficult for a trademark infringer to assert a good faith defense. If you prefer, you can place an unobtrusive asterisk or double dagger ( ‡) after the first and most prominent use of the mark. The asterisk or double dagger should reference a footnote with one of the following forms of notice: Reg. U.S. Pat. & Tm. Office, Registered, U.S. Patent and Trademark Office, and __________is a registered trademark of _______.

PART III
TRADEMARK SEARCHING & TITLE CLEARANCE

Trademark searching and title clearance are done to avoid conflicts with owners.  

What to search for?

When doing a title clearance search, the central question is whether the public will believe your book was published or approved by someone else.

Look for similar marks, including spelling variations, used not just for competitive works but also for similar goods and services. Searching for identical (or near-identical) marks is not enough. If you find a mark that is similar in appearance, sound, or meaning and is used for related goods or services, you will want to consider another title. In deciding if two marks are confusingly similar, extra weight should be given to the dominant element of the mark. Unless they have attained a special significance in the minds of consumers, descriptive titles are not an issue.

Changes (especially if minor) such as the addition of a word, reversal of terms, phonetic equivalents, and misspellings will not necessarily help you avoid a likelihood of confusion. Search descriptive terms! While initially, they don’t qualify for trademark protection, over time, through actual use, promotion and publicity, and marketplace success, a descriptive term can be eligible as a trademark (J.K. Lasser’s YOUR INCOME TAX). While a title clearance search is similar to a trademark availability search, courts treat titles of creative works differently than trademarks used for other goods and services. Titles of creative works implicate First Amendment free speech values. In analyzing titles of creative works, courts use a different – more liberal – “artistic relevance” standard than for trademarks in general.

Where to Start Your Search

Step 1.  Trademark Office Database.  The USPTO’s free online database of every federal trademark that’s been registered or applied for is available 24/7. Known as TESS (Trademark Electronic Search System). When using TESS, keep in mind that the database does not reflect the real world.  It does not include unregistered marks.

Click on “Basic Word Search Mark (New User)” and it will take you to the search page.

Before running a basic word search, check the “live” option found near the top left.  Enclose phrases in quotation marks to determine if there are any dead-on or exact matches, keeping in mind that similar marks, and phonetic equivalents, pose a risk.  For that reason, search spelling variations (e.g., both Quik and Quick).  While only a live registration can be used to block a newly filed application, a “dead” registration does not necessarily mean the mark is no longer being used commercially. That’s why it is important to do an internet search.  

CAUTION! It is a common misconception all you need to do is search the Trademark Office’s database for conflicting marks. Not so. You must also be concerned about common law or unregistered marks. Use the TESS database to screen out apparent conflicts. If no relevant results are returned, search the internet to determine if another similar trademark is used for related goods or services.  

If you are flooded with results (you might receive hundreds of hits for a descriptive term), run a "Word and/or Design Mark Search (Structured)” instead. You can construct a keyword search using the Trademark Office’s drop-down lists with this option. For example, if your search term is TASTY for a new cookbook series, put the term in the first search box and select the “non-punctuated word mark” field. Make sure to search for phonetic equivalents and cutesy spellings (TASTEE). Refine your search by combining keywords with AND, NOT, OR, or NEAR operators. For example, put the word BOOK in the second search box BOOK and select the “goods and services” field from the drop-down menu. The search returns 23 hits, including TASTY TITLE for a series of fiction works, namely novels and books, TASTY TIME for book publishing, namely publishing of customized cookbooks.

Remember, the goal is to identify similar trademarks for related goods or services. So, instead of using the “good and services” field, select “international class” from the drop-down list. Trademarks are categorized according to forty-five internationally recognized numbered classes of goods and services. Each class stands for a basket of related goods or services. Using the “international class” field, you can check for closely related goods and services. For example, in conducting an initial search for a new children’s book series, the relevant goods would be classes 16 (for printed materials), 09 (for apps, ebooks, and audiobooks), and 41 entertainment-related services, which include workshops, seminars, as well as episodic television). If you discover Rabid Readers for “computer software for children used in developing reading and vocabulary skills” while screening for conflicts with Rabbit Readers for a “series of educational activity books and ebooks for children.” Because of the similarity in sight, sound, the relatedness of goods, and how apps and ebooks are sold, you must evaluate the likelihood of confusion between the two. TESS results are not a picture of the real world, just a reflection of what the database contains – marks people and companies sought to register.

The USPTO website has step-by-step instructions for searching using the word and/or design mark search (structured) option, with pro tips on expanding and filtering your result. 

Step 1.5. Global Brand Database Search.  If there’s an image associated with your mark,  use the free World Intellectual Property Organization (WIPO) Global BrandDatabase.  Unlike the US Patent and Trademark Office database (at present), you can easily search images. When you perform your search, remember to limit your search to the United States.

Step 2. Internet Search Engine.  Same search criteria, but a wide unwieldy world of potential conflicts to slog through, including webpage headings that feature marks for commercially related goods and services, which means a DIY Internet search may, at best, reveal only obvious conflicts.

Step 3. Professional Trademark Search. A full search by a professional trademark search firm is recommended if use and registration are contemplated. Used almost exclusively for those seeking to lay claim to a trademark, not just clearing a title for use; the cost of a full search depends on the turnaround time and vendor used. Professional search firms such as Compumark and Trademark TKO can find similar marks that can otherwise easily be overlooked by DIY searches. A professional search firm will scour federal and state trademark databases, trade and business directories, the Internet, and other sources for similar marks for related goods or services and deliver a detailed report. A full research report, which can run several hundred pages, will group marks into broad categories such as federal, state, common law, and web common law and domain sections. Compumark includes screenshots and links to web pages on which the word or phrase is found. Although they may flag potentially conflicting marks, trademark counsel should evaluate search results to determine whether other trademarks are confusingly similar. Like fresh milk, the shelf life of a search report is measured in days, not weeks. If the mark is registrable on the advice of counsel, promptly apply with the Trademark Office.

What Should I Do if I Receive a Cease-and-Desist Letter?

A cease-and-desist letter is a serious matter. However, receiving one does not mean you have been sued, or a court has issued a judgment against you. It is just a threatening letter sent to you by an attorney on behalf of their client. Do not ignore the deadline to respond if you receive a letter accusing you of violating someone’s trademark rights. Seek legal advice from an attorney specializing in trademark law before you respond. You may have been wrongly accused. Likelihood of confusion is a term of art that eludes easy definition. If the marks are similar, and the goods and/or services are related, do you have a fair use or other defense? Do they have a valid trademark? You and your attorney will develop a strategy. If you are an author or a publisher, you must inform the other that you received a demand letter. If you are nearing the deadline to respond and have not yet found an attorney, send a short and respectful reply stating that you take such matters seriously and are investigating their claim. Any further correspondence should be between attorneys.

While there is no 'pure heart, empty head' defense to trademark infringement, if you searched and ignored the advice of counsel or continue your activities after receiving a notice and have violated someone’s trademark rights, it can be construed as willful. While willfulness is not a precondition to a profit award, willful infringers are treated more harshly than innocent ones, including, in exceptional cases, awarding attorneys’ fees.

If you wish to explore voluntarily making changes, selling down, or even recalling and destroying inventory, best to work through an attorney. For one thing, it makes it more difficult for the accuser to claim your willingness to explore a settlement is an admission of guilt.

Short of litigation, a trademark owner may seek to enforce their rights by reporting the alleged infringement to online retailers. For example, a trademark registrant can submit a notice of infringement to Amazon’s Brand Registry. If Amazon believes there is merit to the claim, they can remove the allegedly infringing listing from their website and/or elect not to work with you.

TIP. If you receive a threatening “cease and desist” letter, or, worse still, your work is reported to an online retailer, a modest change that reduces or eliminates the likelihood of confusion may placate the trademark owner. However, if you negotiate directly with the accuser, anything you say can be held against you. Your attorney, however, can invoke Federal Rule of Evidence 407, a Harry Potter-like protective spell that allows your attorney to negotiate on your behalf without what has been discussed being used as evidence to prove guilt.

Conclusion

While not an exact science, trademark searching and title clearance is well worth the investment of time. Whether your concern is trademark registration or simply clearing a title, searching reduces the risk that someone will frustrate the launch of your book or cause its removal from online stores.  

 (c) 2022.  Lloyd J. Jassin

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Resources

A Guide to Trademark Fair Use and Book Title Clearance

 
 

DISCLAIMER: WHILE THE AUTHOR OF THIS ARTICLE HAS DONE HIS BEST TO GIVE YOU CURRENT AND ACCURATE INFORMATION, THE LAW IS NOT STATIC AND IS SUBJECT TO INTERPRETATION. THEREFORE, IT IS YOUR RESPONSIBILITY TO CHECK ALL INFORMATION CONTAINED IN THIS ARTICLE BEFORE RELYING UPON IT. NEITHER THE AUTHOR NOR PUBLISHER CAN BE HELD ACCOUNTABLE FOR ANY ERRORS OR OMISSIONS. THIS ARTICLE IS NOT INTENDED AS LEGAL ADVICE. IF LEGAL ADVICE IS NEEDED, SEEK A QUALIFIED TRADEMARK ATTORNEY OR OTHER KNOWLEDGEABLE PROFESSIONAL TO HELP YOU.

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