What is the law regarding using common words from a company trademark in book titles?

Asked over 4 years ago - Seattle, WA

If a corporation has a trademark on a common word (for ex: Kentucky or Creme or Buy or California, etc. ) and my book uses that word, are there any trademark infringement issues?

Assuming the title is descriptive of the book contents. And the font and font colors are clearly different from the corporation's font.

And the publisher of the book is clearly noted on the spine.

Attorney answers (3)

  1. Bernard Samuel Klosowski Jr.

    Pro

    Contributor Level 12

    Answered . I hate to say it, but the answer to your question is: "It depends."

    As an aside, I would be surprised if your publisher had not already reviewed trademark and other intellectual property issues, but since you're concerned enough to raise the question, it wouldn't hurt to ask your publisher about it.

    In the meantime, you might find it helpful to take a look at basic trademark information here: www.uspto.gov.

    Turning to your question specifically, marks (trademarks for goods, service marks for services) are intended to identify the source of the goods/services to the consumer.

    Generally, a trademark infringement analysis considers the mark itself (which may be a word, symbol, design, color and even a sound) and the underlying goods/services.

    Trademarks are considered stronger if they are fanciful (made-up) words like Verizon, Exxon, Lavitra. At the other end of the spectrum, words that merely describe the underlying goods/services are considered weaker, but may still give the owner some rights and protection. "Generic" words are never protectable as a trademark; e.g., no one can claim trademark rights in the word "banana" to sell bananas.

    Also generally speaking, geographic words are not protectable as trademarks.

    So, using your example, if the company is using "Creme" as a mark to sell beauty products, it may be descriptive mark (hints at lotions) and therefore, a weak mark. Nevertheless, especially if it's federally registered, the owner can enforce the mark against a potential infringer.

    Continuing with the example, if "Creme" is being used by its owner to sell beauty products, but you're merely using the word creme in another context such as a book title having nothing to do with those goods; e.g., "The Cream of the Kentucky Crop," then you're probably OK.

    However, there are many twists and turns and exceptions in trademark law. One of those deals with "famous" marks. If you try titling your book, "The Coca Cola Cream of Kentucky," you're likely to get a letter from the owner of COCA COLA, regardless of the differences in goods/services (beverages vs. a story).

    Regarding the font and colors, if you're using the same word and you fall into one of the problems noted above, those differences aren't likely to prevent a trademark lawsuit.

    If there's any concern about trademark infringement, due to the potentially high costs of trademark litigation or in having to recall a product and change all the covers, letters, websites, promotional materials, etc., it's well worth spending an hour or two with a trademark attorney to steer clear of some very avoidable pitfalls.

    Best of luck.

    Per the AVVO terms of use, this general information does not constitute legal advice nor establish an attorney-client relationship. Consult an attorney for personal legal advice.

  2. Pamela Koslyn

    Contributor Level 20

    Answered . I think it's very unlikely that a common but trademarked word used in a book title would constitute infringement of that trademark.

    For one thing, books, especially non-fiction ones, enjoy broad 1st amendment rights to comment on things, even trademarks.

    For another, a book title describes the contents, and isn't using the word as a trademark, whether it's fiction or non-fiction, so your book isn't competing with that mark's market.

    For a 3rd reason, the trademarked word being used isn't likely to be trademarked in class 16 for paper goods, so there would be no direct infringement.

    For a 4th reason, the inclusion of the publisher on the book's spine presumably means that the publisher has vetted the book, and additionally, it also acts as a disclaimer of source.

    For a 5th reason, the title's deliberately different font and color use attempts to not trade on the trademark and acts as a kind of disclaimer.

    Publishing contracts generally have warranties that the author has not infringed on the rights of any party, including copyrights and trademarks, and agrees to indemnify the publisher for any breach of warranty. To make sure you don't violate this warranty, have the publisher's IP lawyer or your own IP lawyer sign off on this book before publishing.

    Disclaimer: Please note that this answer does not constitute legal advice, and should not be relied on, since each state has different laws, each situation is fact specific, and it is impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue. This answer does not create an attorney-client relationship.

  3. Antone F. Johnson

    Contributor Level 11

    Answered . Excellent advice by the others. I would reemphasize that trademark issues are highly fact-specific (and it would be unwise to get any more specific in this forum), so you would be well advised to spend a little time talking through the issues with a qualified IP lawyer. Some brand owners (e.g., the NFL) are far more aggressive than others in policing infringement of their marks.

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