Question about trademarking across various mediums

[gaeanprayer]

What is the name of your state (only U.S. law)? Pennsylvania

Hi everyone. I'm sure there will be some rolling of eyes out there but as much reading as I've done on trademarking (and it's quite a lot) I'm still not quite 'getting' it. The issue is I have a book in the process of publication, but the title is currently where I'm hung up. I googled ahead of time and was disappointed to find the title used elsewhere, but what confused me is the title was used across a wide range of products from technology to newspapers. So I did a trademark search and found, of course, several trademarks from different companies for the same name (I hadn't realized this was even legal), some within a few months of each other. I read through this forum a bit and saw someone mention that trademark issues arise when there is an intent to use it for commerce, which sounds like it's a matter of who uses it first regardless of how many people have filed a trademark for it. Is my understanding of this correct? Or does it simply not matter provided you're not using the same name within the same product genre?

The plan is to speak with a lawyer before going horns-forward into publication, but I'd like to have some idea of what I'm doing first before wading into attorney fees. I personally am not interested in a trademark, at least not at the moment; currently I'm more concerned with avoiding potential litigation down the line. Any help is appreciated!

 

[justalayman]

first, for a title or name to achieve the status of a trademark, it must be an actual identifier for the company. Example; Mickey Mouse is a trademark owned by Disney. Now, if there was a book (a single book), (and without speaking to other uses of the name by others elsewhere), there are no trademark rights earned. It is simply a name. Now, when you get to something like Harry Potter, that name does have trademark status due to a variety of reasons but the fact it was a series of books is one. It was established that "Harry Potter" is Harry Potter. If you pick up a book with Harry Potter in the name, it better be the Harry Potter of JK Rowling fame.

as to cross platform uses:\


apple records

apple computers



they are not infringing upon each other because they do not market in each others markets.



as to who has what rights to the name; there are many different tests involved but a couple of the most important are:

who used it in commerce first (not registered it), if the uses are in the same geographical market, is there confusion created by the two uses, and are the two uses for similar product classes or different enough so they can both live in the same world together (the Apple/Apple example is such a situation of different classes of trademark registration)

there is a brilliant man that posts here that has this stuff down extremely well. Keep your eye out for Quincy. Flyingron isn't a slouch either and when Tranquility and Latigo step into the ring, they offer very respectable opinions as well. That is not to say many others are not dependable but those are the guys, especially Quincy, I would watch for.

. I read through this forum a bit and saw someone mention that trademark issues arise when there is an intent to use it for commerce

Not intent to use but actual use in commerce.

currently I'm more concerned with avoiding potential litigation down the line.

Pick a name that nobody is using. Anything short of that always brings some level of risk. It isn't always that the complainant has an actual claim either. If you are faced with a company with really deep pockets, it has been known to sue the new user of the name simply because they can. Due to the large pockets, they often win simply because it costs a lot of money to fight this battle and the little guy just cannot sustain the battle.


here is a website (and hopefully I am not breaking any rules. It used to be referred to regularly but for some reason has been missing from the forum) that offers a lot of info and some real world examples of what can happen


http://www.tabberone.com/Trademarks/trademarks.shtml

 

[quincy]

What is the name of your state (only U.S. law)? Pennsylvania

Hi everyone. I'm sure there will be some rolling of eyes out there but as much reading as I've done on trademarking (and it's quite a lot) I'm still not quite 'getting' it. The issue is I have a book in the process of publication, but the title is currently where I'm hung up. I googled ahead of time and was disappointed to find the title used elsewhere, but what confused me is the title was used across a wide range of products from technology to newspapers. So I did a trademark search and found, of course, several trademarks from different companies for the same name (I hadn't realized this was even legal), some within a few months of each other. I read through this forum a bit and saw someone mention that trademark issues arise when there is an intent to use it for commerce, which sounds like it's a matter of who uses it first regardless of how many people have filed a trademark for it. Is my understanding of this correct? Or does it simply not matter provided you're not using the same name within the same product genre?

The plan is to speak with a lawyer before going horns-forward into publication, but I'd like to have some idea of what I'm doing first before wading into attorney fees. I personally am not interested in a trademark, at least not at the moment; currently I'm more concerned with avoiding potential litigation down the line. Any help is appreciated!

Trademark rights arise through the use of the trademark in commerce. In the U.S., the first to use the trademark is (often) the one with rights in the mark. In the U.S., registration of the trademark is not necessary but registration of the mark (state and/or federal registration) can provide the owner of the mark with benefits not available to those with unregistered marks.

But ownership of a trademark is more complicated than this. There can be several owners of the same or similar trademarked name. Trademark conflicts can arise if there is confusion in the marketplace through the dual use of a name. The confusion is more likely to occur if the same or similar trademarks identify same or similar products or services.

There can be two or more books with the same or similar titles. In fact, it is not unusual for two or more books to have the same or similar titles. Book titles cannot (generally) be copyrighted. But, even though book titles are not copyrightable, the possibility exists for a book title to have trademark protection.

If your proposed book title is the same or similar to an existing trademark, and you have some concern that your title might infringe in some way on the rights of a trademark holder, your best action is to sit down with an attorney in your area for a complete review of the facts of your book, its title, and the legal conflicts that might arise from either or both. ETA: Or come up with a unique name for your book, as justalayman suggested. This avoids the risk of a trademark dispute.

Good luck.


Edit to add: I was composing this when justalayman posted. His post covers it all, and much more thoroughly than I did. As an additional note, justalayman is an excellent researcher and forum expert in several different areas of the law.

 

[gaeanprayer]

Thank you both! Very helpful, and the additional link is just the kind of thing I was looking for