Q&A: Trademarks in Titles

Q.   May I use a trademarked word as the title of my novel?  Also, I’ve heard that it isn’t legal to use trademarks in a book, yet I see them being used all the time.  Can you explain?

 A.  Let’s begin by defining terms. A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others. (A service mark is the same as a trademark, except that it identifies the source of a service rather than a product.) Companies, big and small, spend considerable time and effort establishing these marks, and under U.S. law, can lose the right to the mark if they fail to “police” its use (send “cease and desist” letters and/or sue for infringement).

Don’t confuse trademarks with copyrights, which protect an original artistic or literary work itself, not the source of the work.  Book and movie titles are NOT protected by copyright (that is why you see many that are the same), but trademark CAN protect a book or movie title if the mark is owned by a publisher, author, or entertainment studio in connection with an ongoing series.  Think of “Star Wars” or “Harry Potter” – good luck using those names in your title.  They are  “brands.”  Unlike series titles, however, the title of a single work generally is not protectable under U.S. trademark law because the work stands alone – although once a second book is published as part of a series, trademark is possible.

As always, there are exceptions – some trademarks are so distinctive and famous –  KODAK®, or Coca-Cola®  — that even though the marks are used in connection with an unrelated and noncompeting product (a novel), and thus unlikely to cause confusion in the public, the law will prevent their usage.

With regard to using trademarked names IN your novel – not to worry.  I am unaware of any case where an author or publisher has been sued for writing “she drank a Diet Coke” instead of “she drank a diet cola beverage.”  Fiction would be crippled if authors were not able to use the names of common, everyday items in their writing.  (In non-fiction, it is proper and customary to place the TM or ® symbol next to the trademark – as in this column — but that would destroy the suspension of disbelief in fiction.)  Where you CAN get into trouble is if your writing defames the trademark — e.g., a plot where Starbucks® coffee gradually poisons the population of America.  But even if you did this, the chance of it being noticed is small unless your book is a big commercial success.

Again, an exception – one company has been particularly litigious in enforcing its trademark, and most publishers will require that your characters use a tissue to blow their nose, not a Kleenex®.

If you remain worried about it, you or your publisher can include a disclaimer at the beginning of the book such as “all trademarks are property of their respective owners.”

© 2011 Daniel Steven