Trademark Is Not A Verb: Useage Guidlines From A Trademark Lawyer

By Bradlee Frazer

I bet I get one call or email 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.” But not always. After explaining it several hundred times, my patience sometimes wears thin, especially if the call or email comes late on a Friday afternoon. 

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: patents, trademarks, copyrights and trade secrets. They are all different, and they all do different things.  Hammers and saws and cement mixers are all tools and they all help you build a house, but one would not use a cement mixer to drive a nail. 

In like sense, one does not use a patent to protect the name of a product or service, and one does not use copyright law to protect an invention. Patents protect inventions and processes. Copyrights protect books and movies and sculptures and photographs. Trademarks are that 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®-brand hamburger comes from McDonalds, 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, and another wore Gucci® shoes.  I even had the little “Circle R” symbols right there in the manuscript, next to the trademarks.  (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 novel, but the point stuck with me--there is a feeling that one must somehow obtain permission or 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.

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! And 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.

Same thing with band names (as opposed to “brand” names--I get a lot of questions about using the name of a band in manuscripts). 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.

Please email me at bfrazer@hawleytroxell.com if you have any questions.

About Bradlee Frazer

ITW Member Bradlee Frazer’s debut novel The Cure: A Thriller is available through links on his publisher’s website. And yes, he has registered his copyright in the book.

This article originally appeared here on Jane Friedman’s blog. 

Copyright Is Not a Verb

By Bradlee Frazer
GUIDELINES FROM A COPYRIGHT LAWYER

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“I copyrighted my book by putting © on the bottom of the first page.”
“This picture is on the Internet, so I can just ‘right-click’ and use it on my website.”
“I copyrighted this DVD by mailing it to myself.”
“We don’t have any copyrights because we never registered anything with the government.”

Have you ever said or heard any of these things? If so, you are in good company—most people have. But they are all incorrect.

The belief that “copyright” is a verb besets and befuddles almost every author. Should a writer “copyright” an unpublished work before submitting it to an agent or publisher? If a writer does not formally “copyright” their unpublished work and finds someone copying it or giving away free copies, how are they disadvantaged, if at all? How does a writer “copyright” her work?

To a copyright purist like me, “copyright” is not a verb. It is a noun. Technically, a copyright is an incorporeal property right that springs into existence when a sufficiently creative idea is reduced into or onto a tangible medium. It’s actually like magic, like the Big Bang when the universe sprang into existence from a sea of quantum probability. When someone writes words on a page or draws a picture or sculpts clay or trips the shutter on a camera, the human being doing the writing, drawing, sculpting or tripping has created and is the owner of a copyright (a noun!)  in the resulting work—assuming the resulting work possesses the requisite creativity. Done deal—no ©, no government filing, no mailing to oneself needed to create a copyright.

So, assume you have written a book. If it is creative and is not a blatant rip-off of someone else’s work, it is likely you own the copyright in and to said book (there are some major exceptions to that general rule regarding copyright ownership, all of which are beyond the scope of this initial blog post).  If you sell a hard copy of that book, you are only transferring ownership of the paper, the ink and the binding. The incorporeal copyright remains with you on those facts because a copyright exists apart from the medium on or in which the work is tangibly embodied. Said another way, when you sell a copy of a work you authored, you do not at the same time sell away your copyright in the underlying work. They are different concepts: the medium, and the copyright—a distinct intangible property right—the author possesses in the work contained within or on that medium.

If someone copies your book, or large portions of your book, without your permission, that is likely an act of copyright infringement, since the owner of the copyright in a work is the only one who may lawfully make or distribute copies of that work. But in the United States, for the owner of a copyright to have the ability to file and maintain a lawsuit in federal court for copyright infringement, the owner of the copyright must have registered the copyright at issue. This act of registering one’s copyright is accomplished by filing a registration application with, and paying a fee to, the Copyright Office at  the Library of Congress. 

So, should a writer “copyright” an unpublished work before submitting it? Or, said from the copyright purist’s perspective, should the author of a work file an application to register her copyright in that work with the Copyright Office before submitting it to an agent, a publisher or some other third party?  The answer depends on whether the author wishes to have a remedy to enforce her copyrights through a copyright infringement lawsuit in the event her work is copied or distributed unlawfully and her copyright is thus infringed. 

This is the key issue every author must address when deciding if registration of her copyright in a work is warranted: is the availability of a remedy for copyright infringement important? Will the author of the work be aggrieved is someone uses her work without her permission?  If so, then registration is important. In general, however, agents and publishers will not knowingly infringe a copyright in a submitted work. To do so would be anathema to their reputation and their business, and so most authors should not be overly anxious about making routine, industry-related submissions of their works without registering their copyrights beforehand. 

There is one very important “gotcha” that can arise from not timely registering one’s copyrights. In the United States, if you do not register your copyright in a work within three months of the date of first publication of that work, you will not be able to recover either your attorney’s fees or a special category of money called “statutory damages” in a subsequent copyright infringement lawsuit—even if you win. “Publication” for purposes of copyright law is defined differently than the common understanding associated with being a “published author.” Under copyright law, “publication” is very loosely defined as “giving or selling a copy of the work to a third person,” so remember that to have your full panoply of rights available if you do file a copyright infringement lawsuit, you must register your copyright. And if possible, register within three months of the date of first publication, as defined.

Please email me at bfrazer@hawleytroxell.com if you have any questions.

About Bradlee Frazer

ITW Member Bradlee Frazer’s debut novel The Cure: A Thriller is available through links on his publisher’s website. And yes, he has registered his copyright in the book.

This article originally appeared here on Jane Friedman’s blog.