Trademark Is Not a Verb: Guidelines From a Trademark Lawyer

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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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?

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

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.

Brad

Thanks Philip!

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?

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.

Brad

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

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….

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)

Bradlee Frazer

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

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.