Publishers' and writers' concerns with regard to permissions usually involve the use of copyrighted material. However, there are some situations in which questions may arise regarding the use of trademarks.

Trademarks Defined

A trademark is a word, name, symbol, logo or other element that identifies the goods of a particular source, and distinguishes those goods from goods produced by others. For example, the trademark KODAK identifies film produced by the Eastman Kodak Company, and distinguishes that film from film produced by FUJI, AGFA or other film manufacturers.

Trademark rights are acquired by the actual use of the mark on or in connection with goods or services, provided the mark is distinctive, and is not confusingly similar to another mark that is already in use. Federal registration is not required to obtain exclusive rights in a mark, and the owner of rights in a trademark can sue for infringement of that mark whether the mark is registered or not.

The test for trademark infringement is "likelihood of confusion." Any person who uses any mark in a way that is likely to confuse consumers into believing that his or her products are produced, sponsored or approved by or affiliated or associated with the owner of a trademark has committed trademark infringement.

Trademarks and Publishing

The three trademark issues that most frequently arise in publishing are: (1) references to trademarks in books; (2) the relationship between trademarks and book titles; and (3) the use of the title of a book, the name of the author of a book, or the name or image of a character from a book as a trademark for items other than the book itself.

(1) References to Trademarks in Books

As a general rule, a trademark can be referred to in the text or illustrations of a book as long as that reference does not confuse or deceive consumers as to the source, sponsorship or affiliation of the book. For example, the use of the trademarks BUICK, CHEVY and FORD to describe the automobiles featured in a book on antique cars would not lead consumers to believe that the book was created or sponsored by General Motors or Ford, and thus would not constitute trademark infringement. Similarly, the sentence, "The Dell computer outperformed the other models" would not constitute trademark infringement.

Publishers and writers should also avoid using a trademark as a generic term for a product or activity. Phrases such as "Jill made a xerox of the letter" or "Joe took his rollerblades to the park" represent an improper use of a trademark as the generic term, and are likely to result in complaints from the owner of the trademark.

(2) Titles and Trademarks

Copyright Regulations specifically state that titles are not subject to copyright protection. However, titles of books, magazines, plays and other entertainment properties may be entitled to protection as trademarks in certain situations.

The title of an individual book, play or other work is not protectable as a trademark.The title of an individual book, play or other work is not protectable as a trademark unless that title has achieved "secondary meaning." "Secondary meaning" means that the title has become so well known that the public automatically associates it with a particular work. For example, the title Gone With The Wind automatically brings to mind a particular book, and the title Cats automatically brings to mind a famous musical. A title may acquire secondary meaning as a result of publicity, frequent exposure or strong sales.

Even if the title of a single work has achieved secondary meaning and is entitled to protection as a trademark, the U.S. Trademark Office will not issue a federal trademark registration for the title for use on the work itself (e.g., a book title for use on books). However, the title may be registered as a trademark for other related merchandise. (See paragraph 3 below.)

A series title can be protected as a trademark.A series title can be protected as a trademark, and the Trademark Office will accept registration applications for series titles. Examples of series titles that are registered as trademarks include the magazine title THE SPORTING NEWS and the book series title THE MAGIC SCHOOL BUS.

Writers should avoid selecting titles that are the same as or confusingly similar to existing book or series titles, especially if those existing titles have acquired secondary meaning. Selecting a title that is the same as or similar to the title of an already published book or series will, at a minimum, cause confusion for book distributors, retailers and consumers, and may result in a lawsuit for trademark infringement. Writers should also avoid using titles that are the same as or confusingly similar to the title of another entertainment work. For example, using "Rent" as the title of a book may constitute trademark infringement, even though the only previous use of that title was for a musical.

(3) Book Titles and Characters as Trademarks for Non-Book Merchandise

In some cases, the title of a book, the name or likeness of a character in a book, or the name of the author of a book or a series of books may be recognized as a trademark for merchandise other than the book itself. THE CAT IN THE HAT, WINNIE THE POOH, and MARTHA STEWART are examples of titles, characters and names that function as trademarks for products other than the books to which those titles, characters or names were initially attached. In these cases, the Trademark Office will usually issue a registration for the mark for the class or classes of merchandise on which the mark is used, even though the Office would not issue a registration for the use of the marks on the books themselves.