What a Trademark Is or Isn’t: A layman’s look at trademarking words

This is an editorial and not meant to be used as legal advice.   I hope this information is helpful, especially to those outside of the United States who are trying to understand US trademark.  And of course, to those of you who really just want to talk about the issue of trademarking a word.

This is based on my own research.

As an aside, keep in mind that whether you are correct in the way you file for a trademark or not, the perception and the knowledge that most people are likely to misunderstand what’s happening is an issue you’ll need to consider.

Trademark is about brand and potential consumer confusion. It is not about ownership of a word. You can’t own a word. You can trademark a single word. For example – Goosebumps / Goosebumps or Twilight.  That doesn’t mean you own it though.  Note that  the word “twilight” is in The Twilight Zone and these two trademarks aren’t in conflict. And the word “twilight” is not only in this title, but in the series name without incident. Plus this book looks really good! TheDark Twilight (Twilight Shifters Fantasy Trilogy Book 1).

Even in the context of branding, there are rules about how you can use a word mark.

According to Harvard “A trademark is a word, symbol or phrase, used to identify a particular manufacturer or seller’s products and distinguish them from products of another.”  This is for the benefit of both the business and the consumer.

Trademarks protect words or symbols that identify a product.  They are not a license or lease for carte blanche use or control of a common word.

Trademarks are associated most often to brands. They are not an avenue for owning actual words.

 

47808337 - hand pressing brand building on blurred cityscape background

 

You can use a Word Mark.  In context, according to its category, you may trademark a word as a part of a product or service.  So, you can use the word apple as it pertains to a fruit, draw a picture of an apple, sing about apples, but you can’t call your tech company APPLE or use the picture of a bitten apple to promote your tech company.  Alternately, a company selling apples can’t call its brand “apple” because, in context, it’s too generic.

 

What it all means
What it all means

Word Mark

A “Word Mark” doesn’t mean that someone is looking to trademark a word exclusively for their own use. It’s a mark, as used in a brand.  It’s not for the use of the actual word in context to natural language.

A “Word Mark” means you’re using the word, not a design.  It allows the trademark owner to more flexibility when using it with their brand. http://www.patenttrademarkblog.com/standard-character-trademark-word-mark-vs-stylized-logo-design-mark/

Goods and Services

You are required to name a product or service for which you are applying for the trademark.  http://www.patenttrademarkblog.com/trademark-classes-identification-goods-services/

This article by attorney Vic Lin says “You can’t trademark words in the abstract.”  If someone could just trademark words and control how they’re used we’d all be paying tolls to word trolls who had enough money to buy every word in the English language.

You must list your IDENTIFICATION of goods and services which is a description.  You may even have more than one in some instances.

From there you must say what the trademark class (or classes) are.  There are only 45 classes available to choose from.  This again has to do with being more description of the mark and its intended use.

Class 016http://www.tmexpress.com/newsletter/archive/2009/08-2009/internationalclass16.htm

You must name the goods and services within this class that you’re referring to.

Series of fiction works, namely, novels and books.   Now, we know we are talking about fiction and novels/books.  The brand must have something to do with novels or fictional books.

(4) STANDARD CHARACTER MARK is letting people know you’re not using something stylized. You’ve not chosen some special font (fonts can be copyrighted, a font name can be trademarked) or stylized way the word should appear.

The serial number is the reference number for the trademark application through the process whether it is granted or not.

Filing basis 1A just means that you’re currently using that mark in commerce.

The owner is the person who will retain the trademark.

Attorney of Record is the attorney who filed on behalf of the owner.

Type of Mark – A word mark is a type of trademark.  It’s not a copyright or a patent.

Register – There is the PRINCIPAL register and a SUPPLEMENTAL register.  The first (Principal) is where the actual approved mark would reside and the supplemental is where it would reside for non-distinctive marks that are capable of acquiring distinctiveness.

Live/Dead Indicator- This refers to the current status of the trademark.  If it is “dead” it is considered abandoned, not approved or someone forgot to renew it.  Live doesn’t necessarily mean it is registered. It means it’s active in the process.  You’ll know it’s “Registered” when it’s given an actual Registration Number.

Trademark Application Document Form Concept

Trademark can be complicated.  Trademarking a series, even more so.

 

Going back to the use of the word “twilight” we can look at some brand confusion with this Edward’s Twilight: edward’s version of twilight. Before you click that link ask yourself what you think that book is about. After you click it, read the comments. You will see evidence of consumer confusion there.  Some poor young girl got a gift thinking it was one thing, when really it was not. And though there may be some gray area because this book is a parody, the author still stands the chance of having the book taken down regardless of Fair Use law and the issue of parody.  But, people who own trademarks have to pay to fight for their rights. It costs them money to protect the mark. It becomes a burden on the trademark owner. Someone would have to have a very good reason to inflict such a laborious and costly issue upon themselves.  Trademark is for PROTECTION.

The issue with the trademark of the word “Cocky” was in how the author dealt with it.  She treated it as though she owned the word outright.  She didn’t.  What she did wasn’t because she “owned” the word. She didn’t. The problem was with owner who, herself, didn’t understand what she could or couldn’t do with her trademark and overreached by policing it in an inappropriate manner.  She misused the trademark and inevitably lost it.

But, many trademarks are approved, employed and never cause anyone any trouble at all because the trademark owner understands the use and reach of what they have.

There are steps and processes in place to keep people from inappropriately using their trademark.  Just like there are steps and processes in place to keep people from other inappropriate behaviors with other laws, contracts, agreements, etc.

There are legitimate reasons to trademark your brand name or word.  Reasons that are good for the business and the consumer.  Making up reasons to hate someone or fear what they are doing without investigating, checking facts or even courtesy is tantamount to a witch hunt, fear-mongering, and hate culture.  It’s okay to not understand something.  It’s okay to question it.  It’s not okay to slander someone because you don’t like what they’re doing.

Perhaps our next lesson should be on SLANDER or DEFAMATION? https://www.legalzoom.com/articles/differences-between-defamation-slander-and-libel

Sheila English

This is not meant to be used or construed as legal advice.  It is not meant to take the place of professional legal advice.

 

 

Sheila English
Sheila Englishhttp://sheilaenglish.com
Award-winning author of short stories and comic books. Telly award-winning producer and director of many book trailers.

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