Questions on trademark / copyright of name

[breakaway]

Let's say I'm writing a comic book or a book with a lot of pictures in it....and I have 10 characters that I made. Here's some questions:
1) should I get every character name trademarked? That seems like a lot. Especially people who write novels like Harry Potter, they would need every single character named trademarked?
2) let's say I don't trademark it and don't register a copyright either. But I do publish the book and merchandise, so I do legally have the copyright. Let's say one of my character names is "Ultra Bluedude". Can someone legally make a t-shirt with that name on it?

 

[quincy]

The answers to all of your questions, breakaway, are yes.

 

[breakaway]

But that seems rather tedious. I mean, if you look at a book like Lord of the Rings....did the author literally have to trademark every single name in there like "Frodo", "Gandolf", "Legolas" and the other 30 or so characters?!

 

[divgradcurl]

No, you don't need to trademark each and every character. In fact, you probably CAN'T obtain a trademark on the characters unless you have some sort of merchandising or other use in commerce that would provide you with trademark rights. Further, registration is NOT required to obtain trademark rights anyway -- you obtain the rights through use of the mark in commerce.

A trademark is not a way to keep people from using a name, or symbol, or whatever -- it is designed to allow people to develop a name, or symbol, to identify their products and services, so that they can market said products and services. You cannot simply trademark a name or character or symbol and then keep others from using it -- the only way you obtain rights to a mark or name is through the consistent use of the mark or name as an identifier of a product of service in commerce.

With respect to the copyright, your character names are copyrighted in the context of your story. You probably cannot keep someone from creating their OWN character "Ultra Bluedude" and creating t-shirts -- but you certainly can keep someone from stealing YOUR version of Ultra Bluedude. If the other parties version of Ultra Bluedude is too close to yours, you can probably keep them from doing that. But you can't keep someone else from creating their own unique version of Ultra Bluedude.

Besides, Tolkien's characters are probably not a good comparison; since they are so well known, they likely have a broader scope of protection than a new, made-up character. Someday, if your works become as widely known as Tolkien's works, or as widely known as Spiderman or Superman or Batman, then Ultra Bluedude may have a broader scope of protection as well.

 

[breakaway]

Thanks a lot for your reply.
The only part I'm iffy on is where you say someone could use the same name as long as it's a different look than my character. For example, if no one trademarked Harry Potter or any of the characters in the book (we're talking about before it got famous), you're saying someone could print a t-shirt with the name Harry Potter on there with a newly drawn character (let's say a fat guy who's 30 years old with red hair and is not a wizard). I think that still infringes trademark because the name is unique, and not generic.

 

[divgradcurl]

The only part I'm iffy on is where you say someone could use the same name as long as it's a different look than my character.

It takes more than just a different look -- it would require that the character be entirely independent, and in a different context.

I think that still infringes trademark because the name is unique, and not generic.

Why would the name "Harry Potter" be trademarked? Unless there was some sort of "Harry Potter"merchandise being sold, or "Harry Potter" service, there would be no trademark. You cannot have a trademark independent of the commercial use of the mark as an identifier. Before "Harry Potter" became an industry (as it definitely has become), the name "Harry Potter" would not be entitled to any protection under trademark law.

For example, if no one trademarked Harry Potter or any of the characters in the book (we're talking about before it got famous), you're saying someone could print a t-shirt with the name Harry Potter on there with a newly drawn character (let's say a fat guy who's 30 years old with red hair and is not a wizard).

What's wrong with this? Maybe the30-year-old fat guy with red hair's real name IS Harry Potter?

 

[breakaway]

Oh, I probably wrote that too vague. I mean, let's say JK Rowling just published her very first book entitled Harry Potter. So it's been in book stores for about 1 week, and she hasn't filed any official trademark register.....and someone sees the book, likes the name and decides to sell t-shirts of a character he's come up with and he calls him "Harry Potter" as well. The character looks and acts nothing like the one in the book.

 

[The Occultist]

Oh, I probably wrote that too vague. I mean, let's say JK Rowling just published her very first book entitled Harry Potter. So it's been in book stores for about 1 week, and she hasn't filed any official trademark register.....and someone sees the book, likes the name and decides to sell t-shirts of a character he's come up with and he calls him "Harry Potter" as well. The character looks and acts nothing like the one in the book.

Yeah, there's absolutely nothing wrong with that.

 

[divgradcurl]

Oh, I probably wrote that too vague. I mean, let's say JK Rowling just published her very first book entitled Harry Potter. So it's been in book stores for about 1 week, and she hasn't filed any official trademark register.....and someone sees the book, likes the name and decides to sell t-shirts of a character he's come up with and he calls him "Harry Potter" as well. The character looks and acts nothing like the one in the book.

Writing a book does not mean that you own the names of the characters for al purposes. Names alone are not copyrightable in the abstract, they are only copyrightable in context. And, like I mentioned previously, trademark is not available unless the name is used to identify a product or service in commerce, and a title of a book, standing alone, does not meet this threshold.

What you have described would not have been illegal. It would be now, of course, because of all of the marketing and products associated with Harry Potter.

 

[breakaway]

Thanks for the clearing up. You wrote "unless the name is used to identify a product or service in commerce". Does something have to be popular to constitute this? It seems like we're getting into a gray area.

 

[divgradcurl]

You wrote "unless the name is used to identify a product or service in commerce". Does something have to be popular to constitute this?

No, popularity is not required -- only consistent use as an identifying mark. If, aong with your book, you started a publishing company named "Super Bluedude," the "Super Bluedude" could be a trademark that identified books or other works published by your company. Again, a trademark is simply a word or design that identifies the source of a good or service.

It seems like we're getting into a gray area.

Virtually ALL of the law is a "grey area."