I was contacted by someone with a question around trademarks on book titles. No, I’m not a lawyer and this is not legal advice, but it’s an interesting question to consider. A trademark is a form of intellectual property, as is copyright. But they are not the same thing.
What is Copyright?
Copyright applies to creative works such as books, screenplays, magazine articles, and even blog posts. The intention of copyright law is that the person who created the written work should have the sole right to profit from that work. They can either exploit those rights themselves, or they can licence the rights to others (e.g. a publishing contract licences the publisher to publish the book in agreed formats, countries, and languages). For more information on copyright, check out my previous blog posts:
Copyright is automatic, meaning you don’t have to apply for or pay to register copyright (although you can pay to officially register a copyright in the US). But there are certain works which can’t be copyrighted, including book titles—they are deemed to be too short to comprise a “work”. For an example, check out how many books there are titled Secrets or Twilight—a lot. But either word could be trademarked.
What is a Trademark?
Trademarks apply to products or services, and the intention is to give the consumer confidence in their purchases. If you buy a Ford motor vehicle, then you expect a certain level of quality and styling—a different level than if you bought, say, a Lada or a Ferrari. As such, you can’t just manufacture a car and call it a Ford (or a Lada, or a Ferrari). But you might be able to trademark Ford for another product, as long as there is no chance the average consumer will confuse your Ford product with a product supplied by the Ford Motor Company. That means selling a different product, and marketing it with a different visual brand.
This is because trademarks are limited in their application.
You can’t universally trademark the word “dove” because it’s a common word in the English language. You can only trademark it for a specific product or class of products, and you must be the first to use that word in association with that product. So you couldn’t trademark “dove” as a brand of beauty products, but you might be able to trademark Dove Clothing (maybe. I haven’t checked).
Intellectual Property 101: What is a trademark, and can someone trademark three words and stop me using those three words in my book title? #WriteTip #Trademark Click To TweetIf you want a trademark with broader usage, then you might need to invent a word e.g. Kodak or Tupperware or Rollerblade. Rollerblade is one of many companies who have gone to a lot of effort to defend their trademark. In their case, it even meant creating a new phrase to describe their product (inline skates), so their brand name didn’t default to becoming the generic term (as happened with linolieum).
The Twilight Trademarks
Twilight is an interesting case. There are pages and pages of “Twilight” trademarks owned by Summit Entertainment, who made the movies, covering everything from bookmarks to electric blankets. Each is a separate trademark, because you can’t apply for a blanket trademark or a word or phrase. You have to specify what kinds of products or services the trademark is going to be used for … whether that’s bookmarks or electric blankets (which are two separate categories). There were also trademarks for “The Twilight Saga”, and these were owned by the publisher, Hachette Book Group, Inc, but they haven’t been renewed.
Note that the trademark isn’t just of the word “twilight”. It’s a trademark of the word in a specific stylised font–so you can still write and publish a book called “Twilight”, and you can even sell matching bookmarks. But you can’t use one of the trademarked fonts or anything that looks like the trademarked font–that could be considered passing off, or could lead to trademark dilution. (As such, it’s probably best to make sure your book isn’t about sparkly vampires in the state of Washington.)
So, back to our original question:
Can someone trademark three words and stop me using those three words in my book title?
Short answer: maybe.
It’s unlikely for a trademark for three words as part of a book title to be granted. Rather, the three words probably should be the name of a series of books (e.g. the Harry Potter series, or The Twilight Saga), or in a specific font (as with The Twilight Saga).
However, if the trademark has been registered for a series, then it must be used on a series–not a single book. If the trademarked words are used for a single book, that could be seen as a defence, because:
Using [the trademark] in the title of a single book, under most circumstances, cannot constitute trademark infringement.
However, given the point of a trademark is to provide the consumer with a certainty over the origin of the product, if the single title book looked too similar to the trademarked series, then the trademark owner could still argue it was a case of “passing off” i.e. the publisher of the single title book was deliberately making their book look like the trademarked series to confuse potential readers and gain sales.
So it’s probably a bad idea to publish a book called “Twilight in Forks” featuring a black cover with a bright red strawberry and white text in a font similar to that used in The Twilight Saga. The trademark owners could successfully argue that your use of their cover design, font, and the similarity of the title are designed to confuse customers. That would be trademark infringement.
How can you find out if your book title or part of it is trademarked?
Google.
(Actually, Google is a trademark, and me using it in that manner potentially dilutes the trademark. Instead, I should be telling you to search online using your favourite internet search engine. My favourite is Google, just in case you were wondering.)
So, search online for your phrase and “trademark”. So if you want to find out about Harry Potter trademarks, search for “Harry Potter trademark”. That will usually bring up the Justia website, which is a treasure trove of US trademark information.
As it happens, in this case, it look me only a few minutes to discover that two separate authors had trademarked the phrase in question. One was planning to use the phrase on clothing and other merchandise, and the other had trademarked the phrase for self-help books–the genre my questioner was enquiring about.
Protecting a Trademark
Once a trademark has been registered and accepted, the trademark holder has the legal obligation to protect that trademark. In other words, they have to actively ensure no one else uses or attempts to use that trademark. If someone else uses the trademark and it becomes diluted or generic, the original holder can lose the rights to that word or phrase. The trademark owner is obliged to contact people who might be infringing their trademark and request they stop using it.
So What’s the Answer?
My entirely nonlegal opinion is that the author is probably safe if they have only published—and only intend to publish—one book with this title, and they are contacted by the actual trademark owner.
