Today’s guest post is from lawyer Brad Frazer. He has also written two other posts for this blog: Copyright Is Not a Verb and Is It Fair Use? 7 Questions to Ask Before Using Copyrighted Material.
I bet I get one call or e-mail per day from someone wishing to “trademark” something. “Hey, Brad,” they will say, “I want to trademark my new logo. Can you help me with that?”
As has become my new mantra, I explain to them that trademark is not a verb. It is a noun. Depending on my mood, I will sometimes then go on to discuss common-law trademarks versus trademark registration, and the “Circle R” symbol versus the small superscript “TM.”
The true nature of trademarks is, admittedly, confusing, especially when they are so often confused with copyrights and patents—two completely different forms of intellectual property protection.
In a broad sense, “intellectual property,” as contrasted with real property (dirt) and personal property (cars and computers), has four main subgroups:
- Patents. Protects inventions and processes.
- Copyrights. Protects things such as books, movies, and photographs.
- Trade secrets. A secret device or technique used by a company in manufacturing its products.
- Trademarks. A broad category of intellectual property that performs a commercial identification function—they tell you about the source of the good or service you are consuming. You know that a Big Mac hamburger comes from McDonald’s, that a shoe with a swoosh on it comes from Nike, and that insurance being sold by a gecko comes from GEICO.
When I finished the first draft of my novel The Cure, I asked a beta reader to look it over. Her reaction was favorable, but I remember her asking me why there were so many trademarks in it. Her point was that I, as a trademark lawyer, had gone overboard taking care to identify goods and services referenced in the book by their trademark: one character sported a Rolex®-brand watch, another wore Gucci® shoes. I put the circle R symbols right there in the manuscript.
(By the way, circle R is used with trademarks that have been registered with the United States Patent and Trademark Office. TM is for those that have not.)
Those symbols and most of the trademarks were all removed in subsequent revisions of my now-published novel, but the point stuck with me. There is a feeling that one must somehow obtain permission, genuflect or pay money or something when one uses a third-party trademark in a manuscript.
For example, assume that you wrote this sentence: “Marjorie picked up her Marlboros® and slid one from the pack, then flicked her Bic® lighter and inhaled, silently thanking Blue Cross® for her excellent health insurance.”
Stylistic conventions aside, do you need permission from Marlboro, Bic and Blue Cross to use their trademarks in this manner? Must you use the “Circle R” symbol, or risk getting sued?
The answer in both cases is, as a general rule, no. The only time a third-party can force you to use the Circle R or TM symbols is if you have a contract of some kind with them that compels you to do so. Trademarks are a form of commercial identification and only gain life and viability when used in a commercial context to sell goods or services. (Now if we change the hypothetical and assume that the prose you wrote is part of a short story being used to sell Zippo lighters, then Bic might arguably have an objection!)
Same thing with band names (as opposed to “brand” names). A band name, e.g., “ZZ Top,” can function as a trademark, but as a general rule, you may use the name of a band in a manuscript as long as it is in a noncommercial context. Sometimes a client will ask if the fact they are selling the book for money means it is a commercial use, and the answer is no. Trademark law is concerned with the selling of related goods or services using trademarks in manner that will confuse consumers, and contextual use in a manuscript is not serving to sell competing services or goods (outside of our Zippo hypothetical).
But be careful with lyrics—lyrics are protected by copyright law, not trademark law, and so wholesale appropriation of lyrics into a manuscript may get you into hot water for copyright infringement, and the fact you are selling the book for money IS relevant in a copyright context!
Candidly, I have not found that using actual trademarks brings much life or verisimilitude to a manuscript, but if you choose to use them, and if you use them in a manner not designed to sell competing goods or services, neither permission nor marking (the Circle R and TM) should be required.