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Ask Author Law

Another question about trademarks for authors

Ask Author Law is a Q&A blog about legal issues for authors. I am a practicing attorney, freelance writer, and publishing consultant. I focus my law practice on the representation of authors, often consulting with or serving as co-counsel to other attorneys on publishing cases. This information is for general purposes only and is not legal advice. Asking a question or reading an answer does not create an attorney-client relationship.

Q: I’d like to know about titles and trademarks. I understand that titles cannot be copyrighted, but what about trademarks? I’d like to trademark the title of my book because it’s the first of a series of self-pub books and is the theme of motivational speaking I do. Is it possible to trademark my title? If not, can I trademark a concept belonging to me? Does that mean someone else can’t use this term in their title? If so, do I need to register my trademark somewhere like you do a copyright? Can I register it myself? What if I just use a trademark symbol without the hassle of registration. I hope you can shed some light on this perplexing topic. I need to go to law school!

A: Copyright protects the exact expression of ideas, but not the underlying facts or concepts. Trademark can protect underlying concepts and ideas if they identify the source of a product or service and help distinguish it from others in the minds of consumers. Trademark law really offers two kinds of protection – it protects consumers from being confused or misled about the source of products and services and it protects businesses from having the value invested in their brand and reputation from being ripped off by competitors. A good example from the field of publishing is the Dummies series. Consumers know what to expect when they buy a Dummies book and because the concept is trademarked, the publisher has a right to keep others from stealing readers by using a title that appends the words “For Dummies” to a subject.

Generally, you can’t get trademark protection for individual titles, but you can protect the overall concept of your series of books and speaking programs because the trademark tells consumers who you are and what you offer that is different from the offerings of other speakers and authors. Trademark protection might be possible for an individual title if it develops something lawyers call “secondary meaning” by becoming so closely identified with a particular work or author that readers have come to associate the title with a particular work. Gone With the Wind is an example of a title that has acquired secondary meaning.

From the description of your idea for a series of books and related programs, it sounds like your concept would qualify for trademark protection. It is permissible to use the TM symbol with any mark, even if it is unregistered. The R in a circle symbol, however, cannot be used unless the mark has be registered by the Patent and Trademark Office. While it’s possible to handle trademark registration yourself, it’s a much more complex process than copyright registration and there are numerous ways to get into trouble along the way. I routinely advise clients to save money by registering their own copyrights, but I almost always advise that trademark registrations be handled by an experienced intellectual property attorney.

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