Thursday, March 20, 2014

Publication of my third "Do Ask, Do Tell" book does re-animate the trademark question

First, let me introduce today’s post with a tiny anecdote.  Yesterday, in a major Target store in Falls Church, VA I noticed that Olympic snowboarder Shaun White, 27, has his own brand of inexpensive athletic clothing, and even his own little trade dress symbol. (See TV blog, Jan. 26, 2014 for a review of his documentary film.)  It wondered, if there was another Shaun White somewhere who wanted to use his name commercially, would he experience a problem.  I’m luckier in that my last name is eastern European, somewhat unnaturally spelled, and uncommon (except in a few areas in the Midwest). 

I also feel a bit like a fool over this on this first day of Spring.  Yesterday (a rather funky, drizzly day in more than one way), I went to the Angelika Mosaic theater in Merrifield, VA for a movie (“The Grand Budapest Hotel”) and then drove over to Falls Church, through the traffic on Gallows Road, to the Target – completely forgetting that there is a new Target in the Merrifield complex across the street, complete with the red Target circles, suspended high in the air like a spaceship.   I’ve been in the new place once.  I’ll try it again.  But box stores all seem to be the same.  I was in the store on Route 36 in Roseville MN many times when I lived there, and even interviewed the company once in 2003 to be a debt collector.  And there’s even a row.  Over the phone, a business rejected my target card, but the card still worked yesterday.  There’s no evidence that it was compromised by the breach.
Now to get to the main course today.  Having published (through XLibris LLC) the third of my series of books that I call “Do Ask, Do Tell”,  that is “Do Ask, Do Tell: Speech Is a Fundamental Right, Being Listened to Is a Privilege” (Books blog, Feb. 27, 2014), should I try to trademark the name of the series?

You can't trademark an individual book or movie title, but you can brand a series (like "Star Wars" or "Harry Potter") or even the lead character of a series (like Tarzan, probably).  It's common for unrelated single books and movies to have the same name, although sometimes there have been fights (as with the :eee Daniels "The Butler" film).    
I don’t know yet, and the motive for doing so would be to help improve sales potential for the books and any potential derivative films.  I absolutely have no intention of behaving like a “troll” and disturbing others who use the common English, politically-related phrase (clearly related to the “don’t ask, don’t tell” policy regarding gays in the military from 1993-2011). 

In fact, the phrase would make a good name for a motion picture company that produces and/or distributes films on social and political issues.  The closest example today might be Participant Media, a name which itself makes sense.  But I can imagine getting together with some other people, and doing kickstarter for a few interrelated media projects.  That is still somewhat “down the pike” (to borrow a phrase from a young medical student).

It's noteworthy that in the movie business, companies often both produce and distribute content.  At some point, production is probably regarded as a service, where as actual film copies are goods.  It appears that the USPTO allows and expects them to register marks for each business activity, which may often be based on the same wordmark and trade dress.  However, some variations may occur in the way trade dress is displayed to consumers;  most movie companies have musical trade dress motives as well as visual but don't always use them, and sometimes vary their marks slightly in different distribution environments. 
I have not yet called a trademark attorney.  I may very well do so.  But I did look at what USPTO says about the process online, and the main link seems to be this. Both six-minute videos are important. 
Note the trap: it is possible to pay the application fee, fill out the forms wrong and blow the fee which is not refundable.  It’s critical to distinguish between “goods” (or products) and “services”. 

What then gets interesting is the “Trademark ID Manual”, link. The most applicable category for my books would seem to be 139-016, “Series of non-fiction books in the field of (indicate topic or field)”.  But the last of my series has both a “non-fiction” and a “fiction” section.  About 60% of the text is in the “non-fiction” portion.  Also, it isn’t about just one “field”.  It’s about “connecting the dots” among all fields.  I really have no clue yet as to whether this would be a problem for USPTO.  

Update: April 2, 2014

See my "Book Reviews Blog" April 1, 2014 for discussion of the new website "Doaskdotellbook3", by Xlibris, promoting the latest book in my "Do Ask, Do Tell" series.

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