This article, written by Michael Banner, is from the August 2019 edition of Nink, the monthly newsletter of Novelists, Inc. (NINC). Nink, which is packed each month with informative articles for career novelists, is a benefit of NINC membership.
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The following story is true. The names and book titles have been changed out of respect for the actual author. What he experienced could have happened to any of us… until now.
John Smith is a bestselling author and award-winning screenplay writer, who recently found himself facing a serious legal problem.
Someone had filed for a federal trademark on a brand name that John was already using for a fictional series he had penned three years earlier. Potentially worse, that someone was a billion-dollar video-gaming enterprise, with millions of subscribers. They were seeking an “Intent to use” trademark in
"Computer game software and related items" and also "downloadable digital media and downloadable audio files." The word they wanted to trademark, “Blacktree.”
“Blacktree” is the name of John's Amazon #1 bestselling two-book series, and the name of the protagonist and hero of that series, Bobby Blacktree. His series included eBooks (legally described as “downloadable digital media”) and audiobooks (“downloadable audio files”).
John’s ultimate plan, after a highly successful test-market of a five-book series in the same genre, was to leverage the “Blacktree” brand he had created and launch additional books in the Blacktree series in 2019 and 2020. After which he would complete the screenplay and market it to Hollywood.
That was his plan, before he received notification about the pending trademark registration from one of his Google Alerts watch phrases.
Legal Concerns
John had previously established (by publishing his books) a prior claim to the rights of the series brand name. However, if this gaming company was granted their federal trademark registration, they would have obtained all rights to that name under the rules and regulations established by law and managed by the U.S. Patent and Trademark Office (USPTO).
The gaming company would then have total control over whether John could use the Blacktree name, not only for his two existing eBooks and audiobooks (and the main character name in the series,) but also for future Blacktree books and screenplay.
At minimum, the gaming company could have had Amazon take down his Blacktree series in all its forms, simply by filing a complaint with Amazon and presenting a copy of their trademark. And, because this gaming company had a long history of aggressively protecting their registered trademarks, John could have been looking at a devastating lawsuit if he tried to use the name Blacktree in any future works.
Simply put, if John wanted to sell any more books (current or future) in his series, and the gaming company proceeded forward with their trademark application, John would have had to change the name of his series and main character; update the eBook and audio files; and rebrand future planned books, the screenplay and everything else associated with it.
John clearly had only one choice: he filed an opposition to the gaming company's trademark with the USPTO. Simultaneously, he filed a trademark registration of his own for the brand Blacktree. Legally, John had a clear case of establishing the brand three years prior and thus, he would have a clear path to have the gaming company's trademark request quashed by the USPTO, and then have the USPTO approve his own trademark registration. Simple, right?
Wrong! We are forgetting something disturbing about our legal system: “Whoever has more lawyers and money, usually wins!”
In this case, the gaming company really wanted this name. They also had time on their side because it normally takes a few years to have an online computer game developed, tested, and released. Even though John legally had first use rights, the billion-dollar company and their team of lawyers could easily have buried John in appeals and requests for extensions, and if they desired, lawsuits. At hundreds of dollars an hour for attorney representation, essentially, they could have financially ruined John with just the legal fees alone, forcing him to give up, so that they would prevail.
Other Concerns
John’s financial well-being was not all that was at risk.
The national news media covering computer gaming caught wind of this battle, and incorrectly reported that John was “suing” the gaming company. Additionally, they erroneously reported that John was responsible for stopping the gaming company’s next release of their beloved online role-playing game; a game that boasted millions of over-zealous, fan-boy players.
That’s when the backlash started.
Immediately, thousands of gamers began posting their comments of hatred against John, sending John angry and physically threatening emails, and blasting him with endless social media posts. Some even posted negative reviews on his books. All this because John had the nerve to defend his brand.
Before revealing the end of this story, let us look at the lesson we should all learn from John’s experience.
Lesson Learned
Authors must proactively protect themselves against trademark infringement.
That is, you must take two actions to preemptively protect yourself and avoid a potential battle like the one John faced.
- Thoroughly research your series name and book titles before publishing, and
- File for a federal trademark under one or more publishing categories.
Thoroughly Research Your Series Name
You have probably already searched Amazon’s database for similar sounding book titles, just to see what is out there. Maybe you have even Googled your prospective book title or series name to see if someone is using it in your book’s genre. That is a good start, but do not miss another very important resource. Before pushing that publish button, search the USPTO database to make sure your series name and book titles are not infringing on a registered trademark in the publishing space.
To do this, go to USPTO.gov. Under the “Trademark” banner, choose “Searching trademarks” from the drop-down menu. Now find the “Search our trademark database (TESS)” link. You will want to use the “Basic Word Mark Search (New User)” option and type in the name of your prospective title.
You may see several hits. Make sure you review them all, one at a time. What you are looking for are “LIVE” registrations. If there is already one registered (and Live), and you see that its “Goods and Services” section includes a series of numbers starting with either IC 009 or IC 016 (the two classes for books), then someone has already registered that name in the publishing space. You will need to modify your series name and/or book titles, otherwise you risk Amazon turning your books off at some point in the future for trademark infringement.
However, if you do not see your prospective titles already registered (and Live) or they are listed in the database but are not in the two publishing classes, you are good to go for publication.
File Your Own Federal Trademark
If the name is available for trademark under the publishing classes, then immediately after you publish your series, file for a federal trademark on that series name.
A strange quirk in trademark law that most authors do not know about, is that while you can trademark a book series title as a brand, you cannot trademark a single book title. You must use the same name for more than one book before it’s considered a brand and eligible for trademark protection. In other words, you can trademark a name if it is used on two or more books because it is now considered a “brand.” That’s true for book titles and series titles. More than one book with the same title or series name must exist and be used (or intended to be used), before it’s eligible for protection.
This brings up another point to consider.
Even if the USPTO database does not show a trademark issued for your series or book name, you need to look on Amazon to see of anyone else is using that exact name on more than one book in their backlist. If so, then they have prior trademark rights, having established a brand for that name, even if they have yet to file for the trademark. You will need to pick a new series name or book title to avoid potential infringement problems down the road. None of us want another “Cockygate” scenario.
[Editor’s note, for more on this and to read Nink articles written about this topic, please review the July 2018 issue in the Nink archives.]
Trademarks are filed in one or more Goods and Services classes. Again, the two International Classes (or IC) covering books are 009 (for eBooks and audio books) and 0016 (for print books). Each class will cost $225 to file, or $450 for both. If you are worried about costs, file for at least one: class 9, since that is likely your most profitable book class. While not cheap, think of this as an “insurance policy” to protect you against someone trying to steal your brand and/or threaten your ability to sell your books under that name on various platforms like Amazon.
Bottom line: What we do as authors is a business. Businesses have assets that need to be protected. Our books and their names are some of our most important assets. Smart business practices dictate we proactively take steps to protect our series names and book titles, before someone else takes these rights from us. Or worse, someone with deeper pockets crushes you financially, just for using a name they want, even though you had all prior rights to it.
Epilogue
“So, what happened to John?” you ask.
After thousands of dollars in legal fees, John and the gaming company reached an amicable agreement. The terms are confidential, so the actual settlement remains unknown. My hunch is that John is both relieved and pleased with the result. And yet, the settlement only occurred after his reputation took a beating and he suffered many sleepless nights. Don’t put yourself in the same position as John.
