Tuesday, May 8, 2012

Guest Post: Why you can't title your book "Coca-Cola" An Intro to Trademarks

Please welcome my guest, John A. Bermingham, Attormey at Law. John and I met through a local business networking group. In addition to being a specialist in entertainment and contractual law, he is a avid reader and writer with designs on being the next Grisham.  
Recent discussions in PubWrite and in the social media circles over the cease and desist filed against an indie author by a black-light acrobatics group (of recent notoriety on a reality show) prompted me to ask John to share some thoughts on trademarks. 
He will be making periodic appearances here to discuss matter of interest and importance in the evolving publishing world.

So take it away, Counselor!

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Time to be creative, time to inspire, and time to be original!  You get your glass of wine, find your stimulating view, sit by the window pane, light the candles, and look to begin another adventure with your favorite literary characters.  However, as you begin to sit down and write your novel, this little guy with a briefcase and glasses jumps up into your window and yells, “make sure to protect yourself, legally.”  You question, why do lawyers need to be involved in everything?  Was Shakespeare wrong when he penned “first thing we do is kill all the lawyers” as a compliment?
As an artist you may question the need to protect yourself legally. What does that mean?”  Most writers might be aware that they must copyright an original piece of work to prevent infringement and flat out stealing, but how can an author be sued for trademark infringement?”  What does a trademark protect against?
The Supreme Court ruled in 1995 in the case of Qualitex Co. v. Jacobson Products Co, U.S. Supreme Court (1995), that "trademark law prevents others from copying a source-identifying mark, it 'reduces the customer's costs of shopping and making purchasing decisions,' for it quickly and easily assures a potential customer that this item -- the item with this mark -- is made by the same producer as other similarly marked items that he or she liked (or disliked) in the past.  At the same time, the law helps assure a producer that it (and not an imitating competitor) will reap the financial, reputation-related rewards associated with a desirable product." 
Ok so what does that really mean?  Legally it means that you cannot title your book, for example, “Coca-Cola” or even “Coke” as the Coca-Cola® Company has that trademarked.  Notice the ® or a ™ after the name - these are both considered trademarks and both legally protect the one who has the original trademark.  The ® means the trademark is registered while the ™ means it is in the process of being registered.  Even the shape of a Coca-Cola® glass bottle is trademarked because once you see the bottle you know the product inside the bottle is Coca-Cola®.   
Copyrights and trademarks can often be confused.  A copyright is granted as soon as the piece of work is created, while a trademark might take time for recognition before it is actually trademarked.  Furthermore, as copyrights eventually end after 70 years plus the life of the author, a trademark can be renewed indefinitely. 
In the literary world, if a purchaser looks at your book title and might identify it with a trademarked product, believing both could be produced by the same company or individual, there can be an infringement. 
Just think of finally having the title of your book, the one you thought about night after night, and subsequently getting your cover art for the book – then receiving a cease and desist order from the one who holds the trademark for the same or even a similar mark!  Legal awareness must be considered as soon as you create something.  According to the Trademark Dilution Act of 1995, the owner of a trademark can stop another from using its trademark if there is a resemblance, similarity, or the title of your book might harm the trademark owner of its full value of the trademark. “Unlike copyrights that deal with the marketplace of expressive ideas, trademarks deal with the marketplace of goods and services” (Jassin, 2012).
Nevertheless, keep the legal issues in mind when creating your work.  Laws are involved in everything we do and wherever we go.  You have the right to have your work protected and after all your hard work and getting your creative juices down on paper, it would be a shame to see someone else get the credit you so rightly deserve.
Keep writing!
John A. Bermingham, Esq.

John A. Bermingham is an Attorney at Law who specializes in entertainment law, contractual transactions, and intellectual property.  He can be reached at (732) 500-2081 or johnabermingham@aol.com
Additionally, Facebook friend me at www.facebook.com/people/John-Bermingham/172801692
Here is a great website to give you information on trademarks and copyrights: http://www.uspto.gov/trademarks/basics/trade_defin.jsp.

Jassin, L.J.(2012). CopyLaw.com. Retrieved from