Tuesday, May 19, 2015

Should a book author trademark his own series? Does the writer need to?



It’s time to go back and review the entire trademark application process, and pose the question, for myself and for others, do “I” (or “You”) need to file for a trademark for a book or film series title, or any particular niche of products or services.  
  
Let’s go through a few ideas.  A trademark applies to branding for “commerce”, not to the content of intellectual property itself (which is what copyright protects).   
  
Something can be “non-profit” and still be “commercial” and protected by trademark.  The “Blue Cross and Blue Shield” trademark for health insurance companies will be aggressively defended even though these are non-profit (I’ve worked for them before).  
  
However, the goods and services must be available to the public through normal channels of interstate (and international, in most cases) commerce. 
  
Domain names are initially assigned on exact matches, but trademarks consider close or confusing or misleading marks in the same line of business.  Domain names set up intentionally to draw traffic away from an existing business (as to distribute malware or adware, or even some “parked domains”) often can face trademark infringement litigation.  
  
It appears that a series of books or films starting with the same title gets automatic trademark recognition once regularly used in commerce.  That may be true of my own series (“Do Ask, Do Tell”) and is certainly true of popular series like the “Harry Potter” novels, or many movie and comics franchises.   Marvel and DC Comics have certainly mastered trademark law.  If you simply let the publisher (even a self-publishing POD company) sell it, you may not need the mark. 
  
That is explained here on “Copylaw” at this link.  
  
In fact, if you try to register a “book series” mark with USPTO, it would appear, from my reading, that you actually may have to have a company which sells the books.  It’s OK to use Amazon, Barnes and Noble, and regular or independent bookstores, but it would appear that you need your own commercial operation – which would normally comprise an e-commerce website, able to take credit cards and Paypal with encrypted traffic (https), and managing some inventory.  As a small business, you would be need to be mindful of local zoning and tax rules if you keep the inventory at home (which admittedly wouldn’t need much space or create much traffic).   
  
If you look at the site “Tmweb” and enter “books” into the search argument, you see that USPTO tends to look at books as a genre-related product, with many specific categories by genre and by physical assembly. That’s a problem because you have to pay a separate category fee for each genre.  Also, “non fiction books on a variety of topics” is acceptable only as also a publishing-house mark, so you have to create your own imprint and sell it directly.  It would probably be OK to put your own imprint over a POD book.  You could probably market them that way on Amazon and BN, even if they are already marketed under the brand of a self-publishing company, but that would be expensive (you’d have to buy the inventory from them in bulk first – and maybe they would see this as infringing, but perhaps OK if you give them enough business, hard to say).  
  
It would be an interesting question if you also make the book available “free” online in PDF’s or HTML (even under CSS or XSL)(that seems to be a subtle point underneath Reid Ewing’s “It’s Free” short film about public libraries).  Are you competing with your own commerce and undermining the meaning of a trademark?   On the other hand, does Google Book search undermine commerce?  One could possibly argue that it does.  
  
At this point, it’s well to note that USPTO seems to have added a lot of material online as to the whole application process.  There are three pricing levels (depending on degree of automation), the cheapest being $225 per business.  The Fee schedule is here and the basic application link is here
  
  

USPTO has a lot of training videos, all of which should be watched.  Critical items include the “goods and services” (or business categories), as well as the “Intent to Use” forms.  These are the way USPTO ensures that a mark has legitimate meaning in commerce and would discourage companies or individuals from deliberately monopolizing common English words or phrases.  All data is public. There is no “right to privacy” about a trademark application. 

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