PUBLISHED DECEMBER 2011
by Steve Gillen, Lawyer & Partner, Wood Herron & Evans
Building a brand for your books is part marketing and part magic. Keeping competitors at a respectful distance from your brand is all trademark law.
In the book publishing context, a trademark is typically the name of a publishing house or one of its imprints (or even a series in special cases— see “Pollyanna, Titles, and Trademarking” in the December 2010 Independent), sometimes used together with a logo or slogan. These marks serve to distinguish books published by that house from those published by any other—that is, the trademarks serve as a distinctive indicator of source.
How do you select and protect a strong trademark? Two sometimes competing factors must be balanced to make a good trademark. The perfect trademark is at once both attractive and meaningful in a marketing sense and protectable in a legal sense.
Degrees of Distinctiveness
The most important characteristic of a trademark, which relates to both marketing appeal and legal protectability, is whether the mark is distinctive. That is, does it allow book buyers to distinguish your books from those of your competitors?
The more distinctive a mark, the broader the scope of protection. Distinctiveness falls along a spectrum like this:
May be protectable
A fanciful mark is a made-up word or symbol with no ordinary English-language meaning other than as a trademark. An example is Anova Books (a British publisher of illustrated titles).
An arbitrary mark has some known meaning, but that meaning has no connection to the goods or services with which it is used other than as a trademark. Examples include Penguin and Orchard Books.
A suggestive mark calls to mind a desired association between the word or symbol and the product or service in the customer’s mind. Harlequin is a suggestive mark for romance novels.
A descriptive mark indicates a quality, function, aspect, feature, or use of the book. The descriptiveness of a mark may range from somewhat descriptive (protectable) to merely descriptive (unprotectable).
A mark that is otherwise merely descriptive, and thus weak, may nonetheless receive trademark protection if the owner can show that the mark holds “secondary meaning” in the minds of consumers (i.e., when consumers hear the descriptive term, they immediately associate it with the mark’s owner, even though the term itself simply describes the goods or services and does not differentiate from those of competing products). Scholastic Press and Academic Press are examples of marks that, though they might have been initially descriptive, have acquired secondary meaning.
Generic terms or symbols are never protectable. As a matter of fairness in competition, all providers of a product or service must be allowed to inform consumers of basic information without restraint. E-book, for example, is well established as the generic reference for digital books and could not now serve as a trademark for any publisher’s titles in that format.
Surnames or family names are usually not the best marks to choose. They often remain weak until secondary meaning has been established at considerable expense. Also, if the company is sold to an unrelated buyer or passed on to more than one heir, bitter and expensive legal battles may be fought unnecessarily over who has the right to use that surname as a trademark.
Steps Toward Trademarking
While most publishers think first of securing a registration for their mark, a thorough trademark search is probably more important than registration in the United States. This is because, under U.S. law, rights in a mark are based on first use, not registration. These are known as common law rights.
Clearing a mark involves considering three important factors:
Protectability is a determination of what scope of protection, if any, is available for a chosen mark.
Although you are free to call your company “Collector’s Guide Press,” you will not likely be successful in preventing other publishers of guidebooks from using collector’s guide in their company name. Likewise, if you called your company “Computer Publishing,” you would find yourself in a crowded field with nearly 40 other live registrations for marks including the term computer for use in connection with books.
Such a weak mark is entitled to only a narrow scope of protection.
Availability involves determination of whether you are or will be the first to use the chosen mark on, or in association with, your goods or services.
The first step in this regard is usually a preliminary, or “knockout,” search of the U.S. federal and state registers. How far the search continues will depend on individual circumstances. This is a critical issue on which you should consult a competent trademark attorney. You don’t want to invest in building a reputation and goodwill for your brand only to discover down the road that an earlier adopter of a confusingly similar mark is in a position to force you to change it.
Searching will be more difficult and more expensive if your proposed mark comprises ordinary English-language words, for the simple reason that the search will probably turn up more hits that require evaluation.
Searches for proposed marks that are fanciful, because they are nonwords, are more likely to come back clear. Of course, fanciful marks do not come packaged with the instant meaning and recognition that accompanies a suggestive mark, so they are less effective, at least initially, in communicating to your market.
One compromise is to adopt a mark that, even though it is not an English-language word, consists of syllables from English adjectives or nouns that convey features or positive attributes of your books. “Microsoft” is a pretty good example.
Registrability involves evaluation of your proposed mark against only those marks registered or pending on the Federal Trademark Register.
The U.S. Trademark Office does not search or consider state registrations, foreign registrations, or prior common law use during initial examination (though prior use by others may be raised in an opposition or a cancellation proceeding).
The Trademark Office may refuse registration on the basis that the mark is generic, merely descriptive, primarily merely a surname, scandalous or immoral, or likely to be confused with another registered or pending mark.
If the refusal is based on another pending application, your application may be “suspended” until the other application issues or is abandoned. This is one of the reasons a thorough search must be as up to date as possible and include pending applications.
To be comprehensive and thorough, a clearance search should include a search for prior common law use of potentially conflicting marks. In many cases, your own knowledge of the industry is the best source. Also, trade journals, advertising media, and news articles can be excellent sources for investigating common law use.
Trademark lawyers typically use professional search companies to conduct these searches. Those companies maintain large, proprietary databases of business, product, and service names and logos.
- Registration Rewards and Requirements
- Registration of your mark in the United States is not required; it is optional.
- Enforceable rights under state and federal laws are created by use of the mark, not by registration.
There are many good reasons, however, for registering your mark. Registration offers the following advantages:
- provides constructive notice of your claim to ownership of the mark
- allows competitors conducting a clearance search to find your mark and avoid it
- provides a deterrent against infringement
- creates evidentiary presumptions that can be beneficial in litigation
- allows use of the ® symbol
- establishes federal court jurisdiction
- creates a preference for Internet domain name registration
- allows you to register with U.S. Customs to block counterfeit or infringing imports
- makes criminal penalties available against counterfeiters
- confers the benefits of incontestability after five years of continuous use, ownership, and registration
Federal registration requires use of the mark in interstate or international commerce. This usually means you must sell some books bearing the mark across state or international lines.
Registration is usually sought on the Principal Register if the mark is inherently distinctive or has acquired distinctiveness. If your mark is not inherently distinctive, or you do not yet have sufficient evidence of acquired distinctiveness, you may be able to obtain registration on the Supplemental Register. Registration on the Supplemental Register and substantially exclusive use for five years may be adequate evidence of acquired distinctiveness and allow conversion to the Principal Register.
Most publishers readily recognize the value in their copyrights and publishing rights; certainly they are core assets in any publishing enterprise. It is less common for publishers to recognize the value in their brand. But a well-conceived and -protected brand has the potential to create substantial value for your business. And a strong trademark should be a key component of your brand strategy.
Steve Gillen, a lawyer and partner in the intellectual property firm of Wood Herron & Evans, has focused his practice on publishing and media matters for 30 years. He is a member of IBPA and a frequent contributor to the Independent. To reach him, email firstname.lastname@example.org or call 513/241-2324.