Posted On April 28, 2014 by Print This Post

Trademark and the Author with Mindy Klasky

Mindy Klasky is one smart cookie. So you can imagine my delight when she wanted to tackle one of the harder subjects that authors face when writing. . . trademarks. We have the joy of making stuff up when we write our stories but what happens when our fiction crosses over with the real world?

They say, “Write what you know.” And what I know is law – I spent seven years litigating trademarks and copyrights in a large law Mindy Klaskyfirm in Washington, DC. I don’t use that experience directly in my novels– I haven’t written (yet!) about lawyers on quests for love. But I use my trademark background in every contemporary novel I write. In fact, my Diamond Brides Series (about players on the (imaginary) Raleigh Rockets baseball team and the women who love them) required some of my most diligent trademark work yet.

When I began to develop the series, I ran a trademark search to make sure that “Rockets” was available for my fictional baseball team. Anyone with Internet access can search the availability of a trademark:

  1. Go to http://tmsearch.uspto.gov
  2. Select a Search Option. (For virtually everyone, this will be “Basic Word Mark Search” which allows a user to determine the owner of a word trademark (e.g., “McDonalds”; the other options allow users to search for designs (e.g., the golden arches logo). Designs add a whole other level of complication that will usually be beyond a novelist’s concern.)
  3. Type in a Search Term and click Submit Query.
  4. Review the results. Keep in mind that just because a trademark registration is listed as “Dead”, it may still be in use. “Dead” merely means that the owners didn’t file timely paperwork with the government.

 Now, I spent years honing my skills, determining whether one trademark was confusingly similar to another. “Similar” for trademark purposes focuses on the “sight, sound, and meaning” of a trademark.

For example, I couldn’t use “Rockets” for my imaginary baseball team if there was already a “Wrockets” or “Pockets” team out there, because the mark would be similar in visual and aural appearance (“sight” and “sound”). Nor could I use “Rockets” if there was already a “Spaceships” team, due to the similarity in meaning. (Spoiler Alert: I ultimately concluded that “Rockets” was available for use.)

(As an aside: I regularly run trademark searches when I’m trying to determine whether a particular mark is still registered. If it is, then I’ll capitalize it in my novel. My characters grab a Kleenex after reading a tear-jerking Xerox copy of a newspaper article; the trashcan in their offices will be emptied into Dumpsters, which keeps the Realtors happy when they show the office to prospective buyers. But they might take an aspirin if they get a headache after spending all day on the escalator without even a sip from a thermos, especially if their zipper got stuck, or they slipped on linoleum.)

Klasky-CatchingHell200x300I still had trademark tasks on my plate, even after I chose my team name. Major League Baseball earns big money every year licensing team logos. While I’m determined to make the Diamond Brides Series a success, I know I’ll never be able to afford Major League licensing costs. Therefore, I have to beware infringing Major League trademarks. I can’t send my Raleigh Rockets to play the New York Yankees, or the Los Angeles Dodgers, or any other real team. Nevertheless, I can send them to “New York”, or to “LA” – a city name can’t be trademarked; only the team name can be protected.

Even with the restrictions on trademarked names, I can make factual statements about an existing team. Thus, if I want to refer to Babe Ruth, I can mention that the Red Sox sold him to the Yankees. I can say that the Colorado Rockies have never won the World Series. Those are facts, and I’m not connoting that the Red Sox, Yankees, or Rockies have sponsored my Diamond Brides Series in any way or that the teams are somehow the source of my spicy romances.

I just have to make sure my factual statements are, in fact, true. If I want to disparage a team, saying that their pitchers always cheat by putting pine tar on their hands and their runners regularly come in hard with their spikes up with the intent of injuring infield players, I’d better use an imaginary team, with imaginary players, so I can’t be accused of tarnishing the trademark of a real team.

If I’ve done my job right, readers will be so engrossed in my characters that they’ll never think about the picky details of trademark law. Baseball (and its associated trademarks) are a backdrop to my stories – each novel is about a man and a woman working through conflicts so they can be the best partners possible for each other.

What books have you read where trademarks leaped out at you? Or conversely, what books have you read where the author has gone through clever machinations to avoid having a trademark leap out at you?

 

***

Mindy posed some great questions . . . hit is with your thoughts and your own questions!

Join us on Wednesday for the fabulous Laurie Schnebly Campbell!

***

Blurb:

Klasky-PerfectPitch200x300Reigning beauty queen Samantha Winger is launching her pet project, a music program for kids. All she has to do is follow the pageant’s rules—no smoking, drinking, or “cavorting” in public.

That’s fine, until D.J. Thomas—God’s gift to baseball—throws her a wild pitch. He slams her in an interview, and the video goes viral. Sam’s no shrinking violet. She parlays D.J.’s apology into a national T.V. appearance—and a very unexpected, very public kiss.

Soon, paparazzi catch the couple in a steamy make-out session, and Sam’s music program is on the block. The blazing hot relationship is threatened even more when D.J.’s son begs to trade in Little League for music class.

Can Sam and D.J. sizzle past the sour notes and find their perfect pitch?

Bio:

Mindy Klasky learned to read when her parents shoved a book in her hands and told her she could travel anywhere through stories. As a writer, Mindy has traveled through various genres, including hot contemporary romance. In her spare time, Mindy knits, quilts, and tries to tame her to-be-read shelf.

http://www.mindyklasky.com

Similar Posts:

Share Button

Contemporary Romance

Discussion

20 Responses to “Trademark and the Author with Mindy Klasky”

  1. If you use the trademarked name right and in a positive light – like she handed him a Starbuck’s Doubleshot – then do you list that trademark on the copyright page as belonging to Starbucks? Or if you used it right – do you not have to bother?

    I was hoping that question would be covered since I only have trademarks disclaimer training from high-tec industries who are voracious at protecting THEIR trademarks. Not so much others!

    Posted by Donnamaie White | April 28, 2014, 12:36 am
    • Donnamaie – Some authors include a line on their copyright page that says something like “All registered trademarks are the property of their owners.” (I don’t bother, because it states the obvious. I also don’t list the specific registered trademarks that I use in my work, because I’d potentially create liability if I accidentally forgot one, and I don’t want to have to monitor trademark registrations on an ongoing basis, in case the registration status changes.) Make sense?

      Posted by Mindy Klasky | April 28, 2014, 7:57 am
  2. Morning Mindy!

    Great post – I never knew about the capitalizing!

    I do wonder about using parts of songs tho…a lot of times I’ll read something like “the jukebox howled out some song about long necked bottles” and you kind of know what song it is, but it isn’t specifically mentioned. Is that the easiest way to use a song in your work?

    Thanks for posting with us!

    carrie

    Posted by Carrie Spencer | April 28, 2014, 7:57 am
    • Carrie – Songs are a whole ‘nother matter — they’re not protected by trademark law; instead, they’re protected by copyright law. Copyright is extremely complex and — alas — far beyond the scope of this post. (There are statutory considerations, case law considerations, and common sense considerations.) Perhaps the University will invite me back to detail those, in the future!

      (Short answer — you can use the title of a song and you can summarize the content of a song without using lyrics, but you can’t use any amount of lyrics and be guaranteed safety.)

      Posted by Mindy Klasky | April 28, 2014, 8:00 am
  3. Thanks for a very useful post, Mindy. I’ve bookmarked it for future reference.

    My publisher is very strict about not using trademarks such as Kleenex. They figure “better safe than sorry.”

    I did not know Realtor was trademarked. That one might have gotten past both me and my publisher.

    Posted by Monica Epstein | April 28, 2014, 8:54 am
    • I understand publishers not wanting to take a risk, but I also think that some carry it to extremes. The generic can sound so stilted! (This, from an author was asked to change “Styrofoam” to “polystyrene foam”. Yeah, my 22-year-old college girl is going to say that!) I often write around trademarks to avoid using them explicitly, if my publisher gets cold feet.

      Posted by Mindy Klasky | April 29, 2014, 5:56 am
  4. Thanks for a timely and informative post. So was it okay to use “Rockets” as a baseball team because there was no other baseball team with a similar sounding name? I just did my own search, and just for fun typed in “rockets”. Came up with a lot of trademarks with part of the name, but I’m assuming that’s fine as long as it’s not baseball-relate? Sorry if I missed something.

    Monica, my publisher also errs on the side of caution – there were many references I had to take out of my first book. Shocked me.

    Posted by Maria | April 28, 2014, 11:22 am
    • Trademarks are registered with a link to a specific good or services. Therefore ROCKETS for breakfast cereal is not confusingly similar to ROCKETS for the services of a baseball team. It *is* necessary to analyze whether the goods and services are similar to each other — ROCKETS for silverware might be confusingly similar to ROCKETS for casual dining china because consumers would expect those goods to be sold by the same party. Make sense?

      Posted by Mindy Klasky | April 29, 2014, 5:58 am
  5. Hi Mindy,

    Thanks for this! I’m working on a sports themed project right now and coming up with fictional team names is a real chore. Would love to have you post about copyright on song usage. I’ve read books that use song lyrics and there’s no mention of obtaining permission from the music publisher.

    Great post! Thanks for blogging with us today!

    Posted by Jennifer Tanner | April 28, 2014, 3:32 pm
    • Good luck with your sports romance!

      I suspect there are a *lot* of self-published books that don’t consider song clearance. No publisher I know of will accept song lyrics without a purchased release — which is expensive and time-consuming and *might* be unnecessary in the eyes of the law — but that’s another post!

      Posted by Mindy Klasky | April 29, 2014, 5:59 am
  6. This is fascinating, Mindy. I’m a garden writer in my day job, and I’ve had to learn the differences between plant names that are trademarked, that have Registered Trademarks, that have Plant Patents, and so on. It look me a little longer to make the connection with fiction writing.

    In my very first story, I wanted to use some OPI nail polish names when my heroine went to get her first ever manicure. It didn’t hit me until later that it was probably illegal to do that.

    Another of my “in work” stories has a storyline with a shout-out to the Wizard of Oz. I’ve been following the recent copyright battles very carefully. Apparently it’s okay to mention Oz-related things from the books, but nothing that is identifiable as something from the movie. Not surprisingly, this has made me a little nervous, but I’ve seen other books with an Oz-related twist, so I guess it’s not entirely out of the question.

    Posted by Becke Martin Davis | April 28, 2014, 7:57 pm
    • I only worked with plant patents in the most general sense — I knew they were out there and I avoided them on a couple of specific projects :-)

      As for the OPI names – they *are* trademarks, although I suspect the company doesn’t register every one of them. (They can still keep people from using them, but their rights are more restricted than if they register them.) For situations like that, I often have fun making up similar-sounding names. You could riff on the OPI puns without ever using one of their titles.

      The Wizard of Oz stuff is an example of copyright law (again, way too complicated for this little post.) In short, Baum’s book is up for grabs (as you can see from Gregory Maguire’s books!) But the 1939 movie is still under copyright, so anything specific to it is still protected under the copyright laws. Copyright has a “back door” — a defense if you’re ever sued — of fair use, but that’s a slippery argument and litigation is expensive and time-consuming. (There’s likely an argument that the 1939 characters also function as a trademark — that they indicate the source, sponsorship, or origin of licensed toys, games, clothes, etc., but the intersection of trademark and copyright is murky).

      Posted by Mindy Klasky | April 29, 2014, 6:04 am
      • It’s enough to scare me, but I’ve invested a lot of time and effort into this story. I can see I need to make some changes where I referred to descriptions of events in the movie rather than the book. *sigh* And the revisions go on…and on…and on!

        Posted by Becke Martin Davis | April 30, 2014, 10:56 pm
        • It’s a really tangled topic, and it’s frustrating when there are so many versions of a work out there. (I think there was a movie, also, from the 1910s or 1920s (before the 1939 one we all know) – and *it* is in the public domain.)

          Good luck!

          Posted by Mindy Klasky | May 1, 2014, 12:40 pm

Trackbacks/Pingbacks

  1. […] http://romanceuniversity.org/2014/04/28/trademark-and-the-author-with-mindy-klasky/ […]

  2. […] by a published author (and trademark attorney), a post at the Romance University, http://romanceuniversity.org/2014/04/28/trademark-and-the-author-with-mindy-klasky/,  explains considerations on using a trademarked item, how to determine if a brand is so protected, […]

  3. […] Romance University: Trademark and the Author […]

  4. […] Romance University: Trademark and the Author […]

  5. […] Romance University: Trademark and the Author […]

Post a comment

Upcoming Posts

  • Nov 24, 2014 And They All Lived Epiloguey Ever After by Anna Campbell

Subscribe

Writer's Digest: 2013 Best Writing Websites (2013) 100-BEST-WEBSITES-2014 Top 10 badge 2012

Follow Us