Trademark Is Not a Verb: Guidelines From a Trademark Lawyer


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Trademark symbol

Today’s guest post is from lawyer Brad Frazer. He has also written two other posts for this blog: Copyright Is Not a Verb and Is It Fair Use? 7 Questions to Ask Before Using Copyrighted Material.


I bet I get one call or e-mail per day from someone wishing  to “trademark” something.  “Hey, Brad,” they will say, “I want to trademark my new logo. Can you help me with that?”

As has become my new mantra, I explain to them that trademark is not a verb. It is a noun. Depending on my mood, I will sometimes then go on to discuss common-law trademarks versus trademark registration, and the “Circle R” symbol versus the small superscript “TM.”

The true nature of trademarks is, admittedly, confusing, especially when they are so often confused with copyrights and patents—two completely different forms of intellectual property protection.

In a broad sense, “intellectual property,” as contrasted with real property (dirt) and personal property (cars and computers), has four main subgroups:

  1. Patents. Protects inventions and processes.
  2. Copyrights. Protects things such as books, movies, and photographs.
  3. Trade secrets. A secret device or technique used by a company in manufacturing its products.
  4. Trademarks. A broad category of intellectual property that performs a commercial identification function—they tell you about the source of the good or service you are consuming. You know that a Big Mac hamburger comes from McDonald’s, that a shoe with a swoosh on it comes from Nike, and that insurance being sold by a gecko comes from GEICO.

When I finished the first draft of my novel The Cure, I asked a beta reader to look it over. Her reaction was favorable, but I remember her asking me why there were so many trademarks in it. Her point was that I, as a trademark lawyer, had gone overboard taking care to identify goods and services referenced in the book by their trademark: one character sported a Rolex®-brand watch, another wore Gucci® shoes. I put the circle R symbols right there in the manuscript.

(By the way, circle R is used with trademarks that have been registered with the United States Patent and Trademark Office. TM is for those that have not.)

Those symbols and most of the trademarks were all removed in subsequent revisions of my now-published novel, but the point stuck with me. There is a feeling that one must somehow obtain permission, genuflect or pay money or something when one uses a third-party trademark in a manuscript.

For example, assume that you wrote this sentence: “Marjorie picked up her Marlboros® and slid one from the pack, then flicked her Bic® lighter and inhaled, silently thanking Blue Cross® for her excellent health insurance.”

Stylistic conventions aside, do you need permission from Marlboro, Bic and Blue Cross to use their trademarks in this manner? Must you use the “Circle R” symbol, or risk getting sued?

The answer in both cases is, as a general rule, no. The only time a third-party can force you to use the Circle R or TM symbols is if you have a contract of some kind with them that compels you to do so. Trademarks are a form of commercial identification and only gain life and viability when used in a commercial context to sell goods or services. (Now if we change the hypothetical and assume that the prose you wrote is part of a short story being used to sell Zippo lighters, then Bic might arguably have an objection!)

Same thing with band names (as opposed to “brand” names). A band name, e.g., “ZZ Top,” can function as a trademark, but as a general rule, you may use the name of a band in a manuscript as long as it is in a noncommercial context. Sometimes a client will ask if the fact they are selling the book for money means it is a commercial use, and the answer is no. Trademark law is concerned with the selling of related goods or services using trademarks in manner that will confuse consumers, and contextual use in a manuscript is not serving to sell competing services or goods (outside of our Zippo hypothetical).

But be careful with lyrics—lyrics are protected by copyright law, not trademark law, and so wholesale appropriation of lyrics into a manuscript may get you into hot water for copyright infringement, and the fact you are selling the book for money IS relevant in a copyright context!

Candidly, I have not found that using actual trademarks brings much life or verisimilitude to a manuscript, but if you choose to use them, and if you use them in a manner not designed to sell competing goods or services, neither permission nor marking (the Circle R and TM) should be required.

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About Brad Frazer

Bradlee Frazer is an author, speaker, blogger and Boise, Idaho native. He loves the blues; Ray Bradbury short stories; and his wife, daughter and dogs. Bradlee’s nonfiction has been published in national legal treatises on matters of Internet and intellectual property law, and he is a frequent speaker on those topics. His works of fiction include the short story “Occam’s Razor,” which was published in an online literary journal, and he has co-authored two screenplays, Dangerous Imagination and Spirit of the Lake. He has written scripts for sketch comedy, radio productions and short films, and in college Bradlee was a film critic who wrote and hosted a weekly half-hour television program called “Premiere!” His first novel, The Cure, was recently published by NYC-based Diversion Books. Click here to find out more. And yes, he has registered his copyright.

  • http://www.youngaspiringwriter.blogspot.com/ Chihuahua Zero

    This is a subject matter I hadn’t really read about. Would the Coca-Cola recipe be an example of a “trade secret”.

    Also, what’s your opinion of books and shows that use fake names for companies and products? For example, the iPear on some Nick shows?

  • Philip Heckman

    Few things are as off-putting in fiction as a circle R or TM. I hope we can do away with this curse. Your post is a big help.

  • http://twitter.com/adrianaryansc Adriana Ryan

    Thank you for this post! I know a number of editors who insist that using a store name or brand name in a manuscript requires special permissions from the company. It’s nice to know that it (usually) isn’t so.

  • Mary Schiller

    This is a subject of much confusion.  I had an editor ask me to remove all references to Starbuck’s and the like in my novel (Ford Explorer, Fiat, etc.), but articles I’ve read said it is perfectly all right to use those.  I even had to remove a reference to “Pocohontas” the Disney movie. 

    The lyrics issue is even stickier.  How much is too much to use without permission?  If a character quotes a song, is that acceptable?  If they sing along with the radio, several stanzas (which just so happen to express something about him), is that a no-no?  What about in the title of a book?  I have one tentatively titled with the word Coach in it, refering to the pursemaker.  Should I ask permission?

  • http://profile.yahoo.com/ZWSWOE6UMXZEVXREPEJGP6WOW4 Brad

    Dear Chihuahua Zero,

    Yes, the formula for CocaCola is a textbook example of a trade secret.  It has value and it is a secret–and they work hard to keep it a secret!

    The use of fake names like the iPear is subject to the same analysis.  If the person who uses the fake name is trying to sell a related good or service and is using the fake name to try and fool consumers into thinking that the fake “thing” is the real thing, then that might be trademark infringement if the two names were similar. Here, I do not think Nick is trying to sell tablets or smartphones, so probably OK.  If Nick did have a line of tablets and called them “iPear”-brand tablets, that might be problematic.

    Brad

  • http://profile.yahoo.com/ZWSWOE6UMXZEVXREPEJGP6WOW4 Brad

    Thanks Philip!

  • http://www.youngaspiringwriter.blogspot.com/ Chihuahua Zero

    From what I know, in the case of lines of lyrics, you’ll probably have to get permission.

    Even in one book that only used a couple of lines, they credited the song on the copyright page. Look into it.

  • http://profile.yahoo.com/ZWSWOE6UMXZEVXREPEJGP6WOW4 Brad

    Hi, Mary,

    See above reply re uber-cautious editors.  As I mentioned, I actually removed most trademarks from my manuscript as well since I found they really did not bring much verisimilitude. I mean, if my character really needed to be in a “Starbucks” to move the plot forward, as opposed to a “coffee shop,” use of the Starbucks mark would likely be permissible, in my opinion.

    Lyrics are protected by copyright law, and there is no bright line test for how much you can use without it amounting to infringement. Remember that it is the act of duplication of the literal words of the lyrics in print in your book–the fact they literally appear as words on a printed page–that matters here, not whether a character sings them, or they are on the radio, or whatever.  If you cause the literal lyrics to appear in print on a page or pages of your book and you either (a) do not have permission from the copyright owner or (b) cannot make a case for fair use (which is way beyond the scope of this reply), then you might be exposed for copyright infringement, yes.

    You may use third-party trademarks in titles of your books as long as the book is not selling or advertising related goods or services.  If your book also happened to function as purse and you called the book “Coach,” that might be problematic.

    Thanks,
    Brad

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  • Maureen Crisp

    and then you can have some fun with the symbols….
    Jasper Fforde in his alternative Thursday Next novels has an all powerful global corporation that has trademarked Toast…and other household names so that every utterance in the Novels has to have the symbols attached to it…A not so subtle indication of the power of the bad guy in these novels….

  • http://profile.yahoo.com/ZWSWOE6UMXZEVXREPEJGP6WOW4 Brad

    Always better to err on the side of caution. But remember that attribution is not permission.

  • http://www.turndogmillionaire.com/ Turndog Millionaire

    This is very interesting. It’s actually on my to do list, to meet up with someone who can offer advice on this. As someone who has just started a new venture, I have a logo, name, free ebooks, etc and I assume I should protect myself in some way.

    The issue is , I have no idea!

    To say I’m a novice is an understatement. What’s overkill? What’s a must? Certainly something I need to educate myself in :)

    I love to learn though, so it’s exciting times

    Matthew (Turndog Millionaire)

  • Eva Sturmer

    Very interesting article. I’m so glad I’ve found it.

    What about quotes from movies? Say, one of my characters is a Star Wars fan and quotes things like: “May the force be with you?” I’m guessing I need permission for those as well?

  • Bradlee Frazer

    Quotes from movies would be subject to the same rules as lyrics, yes, but if you are quoting only short phrases here and there and not causing your character to recite long a soliloquy of dialogue from a movie, that should not be copyright infringement. See http://www.copyright.gov/circs/circ34.pdf.

  • Bradlee Frazer

    This is sort of in the same space, legally speaking . . . http://www.tmz.com/2012/06/18/hangover-2-warner-brother-louis-vuitton/

  • Writer

    I’m curious as to your opinion when it comes to claims of trademark dilution, as opposed to infringement, when a famous trademark is used in a negative context in fiction. For example, what if a novel is titled “Coca Cola Ruined My Life,” and the story centers around a fictional character’s attempts to get treated for an addiction to Diet Coke.

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  • Bradlee Frazer

    Matthew, happy to talk with you about these issues if you wish!

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  • http://www.facebook.com/sdenisesilva Denise Silva

    Hi, and if I mention that my character is singing “name of the song” by “name of the artist” without reference to lyrics, is that okay?

  • http://janefriedman.com/ Jane Friedman

    Yes.

  • Post86

    I want to write a reference book about a dinnerware line that is trademarked. I will not be selling the product, just describing all the different pieces, decals, etc. Kind of on the same level as collector reference books. Will I have a problem with trademark issues?

  • http://janefriedman.com/ Jane Friedman

    You’re fine.

  • John W.

    Sorry, I’m a little late to your article. Very helpful. But I’m curious about situations like the following:

    You start a website called “The Angry Birds Gazette: News and Events for the Game.” You provide news articles about all things related to the game and you accept advertising from game companies selling mobile phone games.

    Would this be trademark infringement?

  • http://twitter.com/bfrazjd Brad Frazer

    John, it is a close call, but I think this might rise to the level of trademark infringement, yes. “Angry Birds” is a trademark, and you are using it in a commercial context and in a manner such that a consumer might think that your website was affiliated with, or endorsed or sponsored by, the owners of the Angry Birds trademark. That’s different that just using the mark in text, in a noncommercial context.

  • Brett

    Hi, I’m an editor at a regional publishing house and I’m baffled about something. We’re producing a book about regional crimes, and we’d like to include a vintage advertisement (Hamm’s Brewery in St. Paul). The ad is public domain, as it dates from 1905. Nonetheless, Hamm’s still exists and the name is trademark. Would including this violate trademark, or am I outhinking myself on this?

  • Brett

    And thanks for the article, by the way. Appreciate it a great deal.

  • http://www.diversionbooks.com/ebooks/cure-thriller Bradlee Frazer

    Assuming that the ad really IS in the public domain (that can be tricky to verify–the old song “Happy Birthday to You” is still under copyright in the U.S.!), you should be OK under copyright law. Under trademark law, using the Hamm’s ad and logo/trademark in a book like this should not rise to the level of trademark infringement either.

  • http://www.diversionbooks.com/ebooks/cure-thriller Bradlee Frazer

    You are welcome!

  • CEE

    I’m the author of a # of poetry chapbooks. I’m currently working on another mms, and due to the (for lack of a better term) “structure” of the material, I’m needing, ideally, to use the name of a video arcade game from the Reagan Years, as a part of the title. Your information above, puts me at my ease, but for one, niggling Q:

    Since we are speaking of the actual title of the mms…and no publisher has ever changed a one of mine…does the phraseology or syntax, the message seemingly conveyed by the title, matter at all? Since we’re speaking of poetry, published by a press which handles no nonfiction of any kind?

    I’m only uncertain, in that I’m not sure at what point the “name” becomes advertisement in competition, even if the material in the body of the work, cannot possibly be related (they aren’t jingles).

    Apologies for the overkill.

  • CEE

    Wow. I’m uncertain, how to be more plain, without more overkill. Especially since I took away a great amount of relief, from your article, itself. Hmm.
    I guess the first thing I’m taking away from what you’re saying, would be that actual *titles*, are a sort of quantum leap, in terms of being bold with usage? A “thumbnail billboard”, if you will, therefore an advertisement?
    But, all right…here: One of my previous chaps, is entitled, “I Am Not Sydney Carton”. A 19th Century Dickensian character. Fairly safe. But, what if we changed this, to, say, “I Am Not Donkey Kong”? Is usage outright out of the question, and if it’s actually permissible, does an alert go up, if instead it reads, “I Am Donkey Kong”, or “”I Am Not!”, by Donkey Kong”? Since we’re discussing, effectively, street poetry–described or profiled in any online listing, shelved appropriately in print form–I have a hard time buying that “consumer confusion”, comes into play. Assuming said consumer, can read.
    I don’t mean to be forward, here. But your article, rolled back a lot of misconceptions I’d had, and in a *good* way, and, now…? Is it because we’re speaking of a title, and a title is considered a kind of advertisement, a priori?

  • CEE

    2nd example, playing off your “Zippo” usage: One writes a sendup of The Marx Brothers, titling it, “Groucho Beso Mucho Zippo”. This immediately calls up in mindseye, the mischievous countenance of Julius Marx in his prime, and such a seminal celeb, apparently loves our friends at Zippo, to pieces! Clearly, this is out of bounds!
    …but…a title softer and minus open endorsement, such as (sorry about this) “I Am Not Zippo”, or better yet, “I’m *Not ‘Zippo’*!”, the body of work telling a tale of identity confusion among 50’s teen friends. The Groucho example, hawks a product, intended or not. Confusion, is likely. The 2nd use, is obscure; the 3rd, spoken as colloquially. Is there any effective difference, or is fact-of-words-upon-the-cover, the Be All?
    I appreciate your indulgence.

  • Clanci Novels

    Excellent article Brad. You answered all my questions.

  • Leo

    Hi Brad, when you say that a trademark is not a verb, does that mean that someone can not trademark a book title with a verb in it? For example something like “The Running Wolf” it describes a wolf that is running as it’s title, but lets say someone wanted to trade mark that as a dog food brand.

  • http://www.diversionbooks.com/ebooks/cure-thriller Bradlee Frazer

    Hi, Leo,

    You may certainly obtain trademark rights in a slogan or phrase that contains a verb. “The Running Wolf,” assuming no one else has previously acquired trademark rights in it, would be an excellent trademark for dog food, yes.

    Best,
    Brad

  • http://www.diversionbooks.com/ebooks/cure-thriller Bradlee Frazer

    Thank you!

  • http://www.diversionbooks.com/ebooks/cure-thriller Bradlee Frazer
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  • ryan f

    hello brad

    i was wondering is it copyright infringement to mention specific makes and models of vehicles in my fiction novel. i also mention that the main character uses a very specific name and type of gun. Could those companies have copyright protection on t the hose names and sue me. or is it just fair use. i understand most the copyright laws, but some things im not sure about. i know my book is protected by copyright law even if its not registered, but i cant take some one to court for selling copies and expect to win without it being registered piece of work and proof i created it.