Using a trademarked name in a book title?

[penguinsfan]

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

Okay, so I have wanted to self-publish some things for years, but have not bothered till I recently researched Kindle publishing and have been viewing videos by a successful publishers. Yes, I purchased his tutorial program after a little research.

Anyway, in one lesson, he says to be careful and make sure you're not using trademarked names in your Kindle book titles. In fact, he says the name of his program has a "K" in the title because "Kindle" is trademarked. He tells a story of naming one of his early works "_______ For Dummies", which is obviously an established brand by a publisher, and that he was contacted and told to rename his book.

Clearly, in his example, he was piggybacking off the branding/marketing that a publisher had built. However, isn't simply including a trademarked name usually under fair use (assuming you're not trying to piggyback the branding)? For example, if I want to title my book Why Everyone Should Own an iPad, then "iPad" is obviously a trademarked product name. For that matter, "Apple" is a trademarked company. Am I seriously to name my book Why Everyone Should Own One of those Touchscreen Thingies Made by that Company Named After a Fruit? Obviously, that is absurd beyond words.

I see "iPad", "Word", "Microsoft", "iPhone", etc. used in book title all the time. Is this any potential violation? Does every author obtain written consent? Does someone actually approve those in a timely manner, with no fee?

Any help would be appreciated. Thanks.

 

[FlyingRon]

A book on the iPad can get away with using iPad in the title because it is clear that the book is not a tablet device and Apple doesn't really care to fight it provided you follow their marking rules.

The "For Dummies" series is as you know an established mark, even a famous one at this point. The trademark owners very much care and your friend is infringing on it directly by using it for his own title.

Most of the big companies have formal statements of how they want their trademarks treated:

http://www.apple.com/legal/intellectual-property/guidelinesfor3rdparties.html
https://www.microsoft.com/en-us/legal/intellectualproperty/trademarks/usage/default.aspx

 

[quincy]

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

Okay, so I have wanted to self-publish some things for years, but have not bothered till I recently researched Kindle publishing and have been viewing videos by a successful publishers. Yes, I purchased his tutorial program after a little research.

Anyway, in one lesson, he says to be careful and make sure you're not using trademarked names in your Kindle book titles. In fact, he says the name of his program has a "K" in the title because "Kindle" is trademarked. He tells a story of naming one of his early works "_______ For Dummies", which is obviously an established brand by a publisher, and that he was contacted and told to rename his book.

Clearly, in his example, he was piggybacking off the branding/marketing that a publisher had built. However, isn't simply including a trademarked name usually under fair use (assuming you're not trying to piggyback the branding)? For example, if I want to title my book Why Everyone Should Own an iPad, then "iPad" is obviously a trademarked product name. For that matter, "Apple" is a trademarked company. Am I seriously to name my book Why Everyone Should Own One of those Touchscreen Thingies Made by that Company Named After a Fruit? Obviously, that is absurd beyond words.

I see "iPad", "Word", "Microsoft", "iPhone", etc. used in book title all the time. Is this any potential violation? Does every author obtain written consent? Does someone actually approve those in a timely manner, with no fee?

Any help would be appreciated. Thanks.

Trademarks can be used in a descriptive way. You cannot talk about driving a Ford Mustang without using the trademarks Ford and Mustang, for example. In fact, many authors will use trademarks in their texts to add color to their written works.

Commercial uses of trademarks, however, are trickier. Using another's trademark to drive the sales of your own product or service is to be avoided. You are likely to hear from the trademark holders if your book title includes their rights-protected name.

Most authors will either obtain written permission from the rights holder before using another's trademark (and there is often a licensing fee involved), or they will consult with a publishing law professional to ensure their particular use does not cross from a fair use of a trademark into an infringement of, or a dilution of the value of, the trademark. You have both federal trademark laws to take into consideration and also state "unfair competition" laws to consider.

What courts have generally found to be a fair use of a trademark are non-commercial uses - using a trademark in a descriptive way, or for comparative advertising or for journalistic purposes, or, depending on the treatment of the trademark, for parodies.

Like FlyingRon implied, you should look to the holder of the trademark you wish to use to see how (or if) they want their trademark used. Using a trademark without permission will always be a legal risk.