Heidi Thorne is a self-publishing advocate and author of nonfiction books, eBooks, and audiobooks. She is a former trade newspaper editor.
I see a lot of confusion and questions on author forums about trademarks, copyrights, and titles. While I’m not a lawyer, and this does not constitute legal advice of any type, I will provide some definitions and discussion of these terms, particularly as they relate to authors and self-publishing.
What Is a Trademark?
According to the U.S. Patent & Trademark Office, a trademark is “… any word, phrase, symbol, design, or a combination of these things that identifies your goods or services. It’s how customers recognize you in the marketplace and distinguish you from your competitors.” Trademarks are primarily for products. If such a mark is used for a service business, it is called a service mark. A trademark is not, repeat not, the title of your book, although it could be at some point in the future.
This is where it becomes confusing for authors. Some book titles have been trademarked. A prime example is Harry Potter. Warner Bros. and J.K. Rowling hold multiple trademarks for Harry Potter brands. However, J.K. Rowling holds the original copyright for Harry Potter. Harry Potter is an extremely complex case of IP, or intellectual property rights and licensing.
Your self-published book is probably not in that same category, though that’s not to say that at some point in the future, you might want trademark protection for your book or related IP, such as characters.
Traditionally published authors, or their agents, should look to include protection for IP rights for the future. Every once in a while I run across a story where an an author was so anxious to get a book deal, that they overlooked provisions for protection of these rights. Then the publisher went on to create merchandise or other offerings, and the author didn’t get a dime.
Realize that protecting these rights through trademark can be expensive. Guidance and legal help from an intellectual property attorney is always recommended for these issues in both the traditional and self publishing arenas.
Sometimes you’ll see a news story about a brand that has applied for ridiculous trademark status of a word or phrase. Paris Hilton’s “That’s Hot” for instance. And, yes, she was successful in that endeavor in a claim against Hallmark Cards. Then there was the whole Candy Crush issue some years ago, with the game maker filing and later dropping an attempt to trademark the word “candy” for gaming.
An author on social media was concerned that a word he used in the title of his book would be trademarked, and he’d be liable for trademark infringement either now or in the future. Given the nonsensical trademark issues that have come up over the years like the examples I mentioned, I understand why he asked.
He should be concerned if he’s using an officially trademarked term in his title, such as Harry Potter, Star Wars, or anything Disney. There are also issues of senior use, meaning that the earliest use may prevail in any dispute (emphasis on “may”).
If you are using generic words or phrases, there’s less concern. According to the U.S. Patent & Trademark Office (USPTO) website, which is a great resource, “you don’t have rights to the word or phrase in general, only to how that word or phrase is used with your specific goods or services.”
However, you should do a search for any special words or word combinations that you think could cause an infringement claim. As a first step, the USPTO website is helpful with its Trademark Electronic Search System, or TESS, database where you can look up currently registered or applied-for trademarks. Then for specific questions or concerns, consult with an attorney who specializes in intellectual property.
A Book Title Can’t Be Copyrighted, But . . .
Authors may also confuse trademark with copyright. Two different things that protect two different things. Trademarks are for protecting product brands. Copyright protects tangible creative works, whether that’s in physical or electronic form. The one thing that isn’t protected under copyright law is book titles. That’s why you’ll see many book, movie, and song titles that have identical or nearly identical titles.
But that doesn’t mean you can or should use a trademarked or copyrighted words or phrases in your title. Again, using the Harry Potter or Star Wars examples, you shouldn’t include those names in your title. It can suggest that these are officially licensed by the copyright and or trademark holder when it is not. Common sense should rule here.
Protecting your rights, and protecting yourself from claims, can be messy business. As I’ve recommended throughout this discussion, an intellectual property attorney can be your best resource in managing these issues.
This article is accurate and true to the best of the author’s knowledge. Content is for informational or entertainment purposes only and does not substitute for personal counsel or professional advice in business, financial, legal, or technical matters.
© 2022 Heidi Thorne