Trademark Is Not A Verb: Useage Guidlines From A Trademark Lawyer

By Bradlee Frazer

I bet I get one call or email per day from someone wishing  to “trademark” something.  “Hey, Brad,” they will say, “I want to trademark my new logo. Can you help me with that?”

As has become my new mantra, I explain to them that “trademark is not a verb. It is a noun.” Depending on my mood, I will sometimes then go on to discuss common-law trademarks versus trademark registration, and the “Circle R” symbol versus the small superscript “TM.” But not always. After explaining it several hundred times, my patience sometimes wears thin, especially if the call or email comes late on a Friday afternoon. 

The true nature of trademarks is, admittedly, confusing, especially when they are so often confused with copyrights and patents--two completely different forms of intellectual property protection. In a broad sense, “intellectual property,” as contrasted with real property (dirt) and personal property (cars and computers), has four main subgroups: patents, trademarks, copyrights and trade secrets. They are all different, and they all do different things.  Hammers and saws and cement mixers are all tools and they all help you build a house, but one would not use a cement mixer to drive a nail. 

In like sense, one does not use a patent to protect the name of a product or service, and one does not use copyright law to protect an invention. Patents protect inventions and processes. Copyrights protect books and movies and sculptures and photographs. Trademarks are that broad category of intellectual property that performs a commercial identification function--they tell you about the source of the good or service you are consuming.  You know that a Big Mac®-brand hamburger comes from McDonalds, that a shoe with a Swoosh on it comes from Nike, and that insurance being sold by a gecko comes from GEICO.

When I finished the first draft of my novel The Cure, I asked a beta reader to look it over. Her reaction was favorable, but I remember her asking me why there were so many trademarks in it. Her point was that I, as a trademark lawyer, had gone overboard taking care to identify goods and services referenced in the book by their trademark: one character sported a Rolex®-brand watch, and another wore Gucci® shoes.  I even had the little “Circle R” symbols right there in the manuscript, next to the trademarks.  (By the way, “Circle R” is used with trademarks that have been registered with the United States Patent and Trademark Office.  “TM” is for those that have not.)  Those symbols and most of the trademarks were all removed in subsequent revisions of my novel, but the point stuck with me--there is a feeling that one must somehow obtain permission or genuflect or pay money or something when one uses a third-party trademark in a manuscript.

For example, assume that you wrote this sentence: “Marjorie picked up her Marlboros® and slid one from the pack, then flicked her Bic® lighter and inhaled, silently thanking Blue Cross® for her excellent health insurance.” Stylistic conventions aside, do you need permission from Marlboro, Bic and Blue Cross to use their trademarks in this manner? Must you use the “Circle R” symbol, or risk getting sued? The answer in both cases is, as a general rule, no.

Trademarks are a form of commercial identification and only gain life and viability when used in a commercial context to sell goods or services. Now if we change the hypothetical and assume that the prose you wrote is part of a short story being used to sell Zippo lighters, then Bic might arguably have an objection! And the only time a third-party can force you to use the Circle R or TM symbols is if you have a contract of some kind with them that compels you to do so.

Same thing with band names (as opposed to “brand” names--I get a lot of questions about using the name of a band in manuscripts). A band name, e.g., “ZZ Top,” can function as a trademark, but as a general rule you may use the name of a band in a manuscript as long as it is in a noncommercial context. Sometimes a client will ask if the fact they are selling the book for money means it is a commercial use, and the answer is no.

Trademark law is concerned with the selling of related goods or services using trademarks in manner that will confuse consumers, and contextual use in a manuscript is not serving to sell competing services or goods (outside of our Zippo hypothetical). But be careful with lyrics—lyrics are protected by copyright law, not trademark law, and so wholesale appropriation of lyrics into a manuscript may get you into hot water for copyright infringement, and the fact you are selling the book for money IS relevant in a copyright context! 

Candidly, I have not found that using actual trademarks brings much life or verisimilitude to a manuscript, but if you choose to use them, and if you use them in a manner not designed to sell competing goods or services, neither permission nor marking (the Circle R and TM) should be required.

Please email me at bfrazer@hawleytroxell.com if you have any questions.

About Bradlee Frazer

ITW Member Bradlee Frazer’s debut novel The Cure: A Thriller is available through links on his publisher’s website. And yes, he has registered his copyright in the book.

This article originally appeared here on Jane Friedman’s blog.