A great title adds a lot to the success of a book and and becomes an important asset to your intellectual property as well as your income. According to CopyLaw.com, a trademark “can create opportunities for multiple passive income streams from licensing the sale of book-related merchandise and paraphernalia”. Huh? What did they say? Essentially, they mean that using a trademark can provide alternative income besides just the sale of your book.
What is a Trademark?
“A trademark protects words, slogans, logos and even designs that identify the source of the goods.” Trademarks also prohibit other people from passing off their own goods and services using your trademarked brand. Like a copyright registration, a trademark is a form of legal protection. In fact, examples of federally trademarked titles include Chicken Soup for the Soul, Dummies and the Hardy Boys book series.
Main Benefits of a Trademark for Authors / Writers
- Nationwide notice of the trademark owners claim
- Proof of ownership
- US registration can be used as “basis for obtaining registration in foreign countries”
- Your right to license and gain benefit from merchandise and other streams of income stemming from your book or title.
Trademark Ownership and Licensing Rights
Before you sign that much desired book contract, ask if your work has the potential for commercial benefit. For aspiring authors, it is you and NOT your publisher who should retain the trademark licensing rights to the title of your work.
Consider all the merchandising products that may stream from your book. Remember the little boy Harry Potter? The publisher, understandably, will want to retain the Merchandising Rights which include the right to license the title of your book and characters contained in it for games, toys, clothing, and so on.
Just to be clear “licensing” is where the owner of the trademark gives permission for another person the right to USE the mark in exchange for royalties.
There is a “grant of rights” clause in a publishing agreement, which many beginning authors, and even seasoned ones, ignore. Don’t. Understand before you sign.
The best way is ask your publisher, or hire someone, to talk to them about the merchandising and trademark licensing agreements. And above all be respectful. Most publishers will not fight you if you want to retain your licensing rights.
A Copyright is not a Trademark
Copyright law (US) does not protect the title of your book. It only protects the original works of the author – the writing itself. If you search a bookstore, you will notice several duplicate titles. The Copyright Office has determined that “titles, names (including pen names), short phrases” and even the ingredients in recipes are not unique or original and thus do not warrant the right to copyright protection. Fortunately, a trademark allows you this protection.
So How do I Trademark my Title?
To obtain a trademark in the United States you don’t have to federally register for one. Just using the TM mark on your title implements the trademark. So, the first to affix or display the TM to goods or services, or files an “intent to use” application with the United States Patent and Trademark Office has the right to use of the trademark.
However, and there’s the little “but” that continues to pop up, not all titles can be protected by trademark law. Titles of works that are part of a series or become synonymous with a particular author or publisher are protected under the unfair competition law. Once a series is established, each work in the series reinforces the trademark.
TIP: Being a series author is one of the little secrets to becoming a successful author or publisher. (Example: TWILIGHT and Harry Potter.) So, when selecting a “series” title, choose a phrase that is coined or arbitrary – not one that is highly descriptive of your work.
Yet, unlike a series, titles of singular works are not protected under the trademark or unfair competition law. The US Patent and Trademark Office states: “Regardless of the actual relation of the title to the book,” courts treat all single title works as “inherently descriptive” at best and “inherently generic” at worst – unless the single title has had “wide promotion and great success.”
However, (Again with the But), if you think your single title “may” turn into a series, then you can file an “intent to use” (ITU) application with the Patent and Trademark Office. This involves filing a “Statement of Use” with 36-months of the application of your application. The benefit to an intent to use application results in an earlier filing date. With copyright registration and trademark law, it is who filed first that counts!
When considering trademarking your title, check with your countries Trademark office. While the road may appear clear for filing, there are several “buts” along the way. Get sound advice prior to launching a new series to avoid costly trademark infringement battles.
- Check the availability of the mark you want to register.
- Hire an attorney conduct a full trademark search.
- Apply for federal (and state) trademark protection.
US Patent and Trademark Office Resources:
NOTICE: This article discusses basic legal issues as an intent of interest only and is not designed as legal advice. Consult professional legal advice prior to acting on any information contained in this article.