CHAPTER ONE…
(Please read the introduction to this book before reading this. You can find that at… Introduction.)
The hardest part of writing a book on Trademark for Fiction Writers is where to start.
I finally figured out that I do need to start with the fact that I am not an attorney, and nothing in this book is legal advice. I’m just trying to help other fiction writers understand this concept of Trademark in Intellectual Property.
To do anything in this area, consult a real IP attorney. But my hope is after this book, the attorney won’t have to waste a lot of your money explaining basics to you.
Normally I would start with a chapter on the history of trademark law, but honestly, the history in this area means nothing, makes no difference at all, and is too stupid in many places to even bother with. So you all got lucky there.
Suffice to say, it started under Henry III, was put into a solid act in France in the mid 1800s, and the Trademarks Act in Great Britain in 1938 sort of set the modern standard, if there is such a thing. (There really isn’t.)
FICTION WRITERS NEED TO PAY ATTENTION TO COPYRIGHT
Copyright protection is automatic when you put something into a form. It is the form that is protected, not the words, the ideas, the characters, the plot, or the nifty writing structure. Only the form.
And it is automatic. Sure, you should do timely registration with the copyright office, but doing that or not does not affect your protection. It just comes into play with the remedies you can get in a court case if it comes to that.
And copyright protection on an IP has a set term that can not be altered unless you do something stupid by signing it away. (Traditional book writers, I’m looking at you.) The term of copyright protection is the author’s life plus 70 years in the United States. 50 years in some countries.
And the basics of copyright are fairly uniform throughout the world thanks to most countries signing onto the Berne Convention.
Where fiction writers fall down on understanding copyright is how licensing parts (slices of your copyright) can be done. And the value of the copyright itself. But that is the Magic Bakery book I wrote, and the workshop I did by the same name. Not dealing with it here at all.
However, at times I will compare trademark details with copyright, just to make sure I am being clear, assuming (falsely) that writers know copyright.
But, if you don’t know copyright, the basics of how to license copyright, and the protections and ranges of coverage of copyright, this book about trademark for writers will sound like Klingon (which is a trademarked, but not a copyright-protected language).
TRADEMARK BASIC NUMBER ONE
Trademark is an Intellectual Property (IP).
That’s right, it is a property, and thus has value. Sometimes a lot of value.
A trademark is established when someone uses a mark FIRST in a commercial or business setting.
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“A trademark is created, and trademark ownership is established, when someone uses a name, logo, or other symbol to identify goods or services in the marketplace.”
Stephen Fishman, TRADEMARK, 11th Edition, Nolo Press
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But wait, Dean, I thought you had to file for a trademark!?!?
Well, yes, you can do that, and I’ll get to that. But the ownership is determined by who uses the mark first. And it must be in some sort of commercial or business setting.
And there are a ton of other rules around that coming later, but that is the basic first rule to keep in mind.
First use wins.
TRADEMARK BASIC NUMBER TWO
There are two types of trademarks that we writers are concerned with. Marks that identify products and marks that identify services. There are two other types, but don’t worry about them.
Say you have a nifty logo for your publishing company. That is a service mark.
Say you have a nifty series name that identifies a lot of your books, that is a trademark.
But for all intents and purposes, the two terms are legally the same.
TRADEMARK BASIC NUMBER THREE
For those of us in the United States, there are four main areas of trademark law that we need to be concerned about. And here is where it starts to get really stupid.
1… Federal Law (Lanham Act)
2… State Laws (all different in all states)
3… Common law… (court decisions that apply)
4… International law.
Yes, all four apply and can be used to protect your work. Should all four be used? Up to you.
And those of you outside the United States, to get protection here, it is the same. Sorry.
I’ll deal with this a lot more in coming chapters.
TRADEMARK BASIC NUMBER FOUR
Under the Lanham Act in federal law, there are 45 different classes. You must pick a class in which to register your trademark.
I will deal with this in future chapters as well, as well as all the fun of registration.
TRADEMARK BASIC NUMBER FIVE
You must keep your trademark in use. Use it or lose it. If it is out of use, it is “abandoned” under the law.
About a billion questions exist in this area. Say you have a series and have trademarked the series name. How often do you have to do a new book or publish something new in the series or republish and recover old books or whatever to keep your trademark in active status?
And don’t forget certification and renewal periods. Forget one of those rules, you lose the trademark as well. And go back to Basic Three and give that some thought on rules when combined with certification and registration.
TRADEMARK BASIC NUMBER SIX
Unlike copyright, which is free, (plus you don’t have to defend, you don’t have to renew, and copyright lasts way, way past your death) trademarks are very expensive.
Legal fees, search fees (I will get into that), and filing fees all add up.
Way up.
And trademarks (once you have one) take constant upkeep, renewals, and defense, which can often mean court cases to defend from someone using your trademark without even knowing they are doing so.
Yup, more money out of your pocket.
So copyright… Free protection and long term.
Trademark… Very expensive and short term.
SUMMARY
And that is just a few of the very basics. Onward into some weeds.
But don’t run away yet, you writers who thought copyright was tough. You never know in this world of licenses, just when you might need to get a trademark. And as I said earlier, if you have read this short book, you might save yourself some money when you are sitting across from an IP attorney.
And if you are shaking your head right now, you should be. Trademark law and protection is nuts.
Hi Dean,
It’s great you’re going into this for writers!
On the part about trademarks being expensive, there are basic IP services provided by universities in most medium or larger cities that are free to people who have or are launching small businesses. For example, in State College PA there’s a service called Happy Valley Launch Box, supported by Penn State, which is helping a friend of mine file for 3 trademarks she needs. The legal advice is free, so she only has to pay the filing fee of $275 per trademark. This is a great option for those with limited means!
Thanks, Marlene! I’m going to look into this at the university in my city. I’d love to be able to file the service mark for my micro press.
And Dean, thank you so much for investigating the issue and sharing what you learn! I’ve had the issue on my to-do list for too long. 🙂
Why file a trademark for that? Oh, wait, haven’t gotten to that chapter yet. (grin)
To find it, contact a large university with a law program. Ask if they offer free legal advice on intellectual property for new/small businesses. Typically these legal help centers are staffed by volunteer law students, supervised by one or two paid attorney positions with that specialty. Penn State has 2 free legal specialty offerings in the same building — one on IP and the other on general “start a business” stuff like filing for an LLC. There may be an earnings cap for using the services.
I really, really hate to be a downer on this kind of thinking, but if you think you need a trademark to protect your business and you actually have a valuable asset, (not just something you think might be valuable) the last thing you want to do is go to some law program where no one knows anything about national or international IP law. Really, really bad thinking, folks. If your trademark is valuable enough to protect in the first place, cutting a few corners in costs could be deadly at best. Either do it right or don’t do it at all. This area of law is so complex, even experts have issues with it.
Our Genorous Host is too nice about this.
From the perspective of someone who has actually done A LOT of creative-industry planning, negotiation, and litigation, the WORST POSSIBLE THING you can do is get inaccurate legal advice on IP issues. This ranges from the “received s/t/u/p/i/d/i/t/y/ wisdom” of communities in the arts ranging from creators to their trade groups to agents/representatives to middleman/exploiters all the way up to attorneys who are moonlighting from another area of expertise (just ask the Estate of Andre Norton… if, that is, you can find a unified voice for the Estate of Andre Norton, which is rather my point). Nonspecialists don’t even know what the relevant evidence might be, let alone the doctrinal peculiarities or industry/subindustry customs that make paying attention to either the evidence or the doctrine so difficult.*
In particular, the nasty pitfalls of “trademark classification” and “description of goods and services within a class” continuously evade just about everyone… including the Patent and Trademark Office and its examiners. To use a notorious example without naming names, consider a trademark application for a series title, or for something iconic in that series. While registering it for the books, did you consider how you would establish first use for toys based upon it? [Name of major H’wood studio omitted] didn’t for [major property name omitted], and so darned near anyone can do toys of that nature legally… if they’re willing to face down the temper tantrum from the 500kg gorilla.
Which points out another problem, which is again clearly outside the scope of Our Gravious Host’s presentation: An awful lot of “trademark” issues concern not the property right, but potential consumer confusion over the origin/quality of the goods or services… as asserted by someone (usually a large corportion or ill-informed individual) who may be attempting to misuse trademark law to unfairly suppress competition. This cockiness can get extreme.
So it’s nowhere near as simple as even Our Gracious Host is making it appear. And he’s not making it look simple, is he?
* Specific example: There’s a Big Five commercial publisher that includes the Philippines as a US territory in all of its boilerplate contracts. Due to changes in treaty status in the 1970s, this has been impossible and unenforceable since 1979 (and probably before then). Just try pointing that out and getting it stricken, though…
Thank you, C.E. Been an interesting exercise to try to make this understandable while showing the beyond stupid. And I haven’t even gotten to the classification stuff yet. Oh, joy… (grin)
And to be honest, I was surprised (but should not have been) at levels of consumer confusion that flows through all this as a legal/practical aspect of everything, let alone first use issues. This entire area of IP law seems to have been designed with legal fees in mind. (grin)
And I flat agree, the worst thing anyone can do is go to a cut-rate IP lawyer, or not use one at all on this. Fishman, in his book, says it is possible to do this yourself, but then almost immediately advises against it in a couple different ways. Interesting line he walked.
Oh, my. This is going to be interesting. I knew trademarks are expensive and require both use and vigorous defense, but I confess I don’t know much more than that.
Looking forward to reading more.
I’m sitting back, absorbing all this and wondering how big a property will have to get before it’s worth the expense of filing for a trademark. Because all those royalties? Right now I can mentally spend them on seven entirely separate things. Book covers, new hardware, new software, narrations, etc. And now this. So it better be worth it. I’m not going to run out and trademark every single character straight out of the gate.
About maintenance, yeah… I’ve lost a patent once due to not being organized enough to pay the maintenance fee. It had been an expensive mistake and a valuable learning experience. The client jumped on the opportunity to “develop an in-house version” right away. Expect the same with abandoned trademarks.
I put the time, money, and effort into developing a TM, it better be something I’m so passionate about, it’s not going to fall through the cracks again.
The vast, vast, vast majority of trademarks have no value and are eventually abandoned. But if you have one that is valuable, remember you win if you used it first. So caution on proving your intent to keep it by filing a trademark with one of the many governments and then abandoning it. Weakens your case on first use at best, if not kills it at worst.
Dean, what you say curiously resembles the “do no harm” principle in medicine 🙂