In past articles, we’ve discussed copyright and how it can protect artists and authors. There is another part of the legal swamp that can also affect book and app publishers.

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Trademarks

Just as with copyright laws, the laws that govern trademarks are often misunderstood. For example, there is an oft repeated myth that common words can not be trademarked. Common words CAN be trademarked within a specific product category. Because of this, a trademark violation can get your book removed from Amazon and other retail outlets, and get your app or eBook kicked from Google Play, the iTunes store and Kindle.

What’s the difference between a patent, a copyright and a trademark?

A patent protects a new and unique product or process. It’s often thought of as an “invention protector”. If you came up with a brand new piece of printing hardware that not only printed pages but also added a hardbound cover to a group of printed pages, you could apply for a patent and that new printer would be protected under patent laws.

A copyright protects new creative work. If one of your customers used that new printer to create a book, that book would be protected under copyright laws.

A trademark protects a name or phrase that is associated with your product line or company. If you came up with a slick name for your printer, like The BookBinder Inkjet, that name could be trademarked.

“A trademark is any name, symbol, figure, letter, word, or mark adopted and used by a manufacturer or merchant in order to designate his or her goods and to distinguish them from those manufactured or sold by others.”

Trademarks are often used to protect brand logos, but can cover a word or phrase in a specific font, or anything else that visually or textually is associated with a brand, product or company. An entire phrase can be trademarked, or specific words within the phrase.

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A famous case brought by King Syndicate in the app space showed how this can be used to stifle competitors. King, the company behind the wildly popular Candy Crush Saga successfully trademarked the word “candy” and filed an intent to trademark for the word “saga”. This prevented any other app developer from publishing an app with the word Candy or Saga in its title. This is a very gray area of Trademark law and King dropped it’s trademark applications, but they did accomplish the goal of stopping other apps from using a similar name out of fear of large legal bills.

Currently, there is a case making major headlines where the word “cocky” was successfully trademarked by self-published romance author Faleena Hopkins. Because her books are sold on Amazon, any other book in the romance genre that had the word “cocky” in the title was reported as a violation to Amazon, and the other books were pulled from the Amazon virtual shelves until the titles were changed. Other authors incurred the expense of changing covers, promotional materials and marketing sources that carried the offending title.

Even though this is a gray area, the competing authors still lost money while their books were out of the marketplace. Here’s why trademarking titles or words in a title often results in a lawsuit challenging the trademark permissions.

Mark McKenna, a law professor at Notre Dame who specializes in intellectual property law explains the problem this way.

“The way trademark law works is you only acquire rights in relation to certain goods and services. For instance, “apple” is a common word, but Apple has it trademarked in relation to computers. It would be a lot different if they were trying to claim rights to the word ‘apple’ for fruits.”

“Trademark law is not supposed to let you claim rights on a title because trademark indicates a source of goods. A single work of authorship isn’t produced in ways such that you need information about the physical characteristics of the book, like the way it’s bound or anything like that. The title is telling you about the content, and we usually think of things related to the contents as being copyright’s domain.”

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Here’s the problem.

ANYONE can apply for a trademark for almost anything.

You merely go to the online US Trademark site and fill out the online forms. You can also file an Intent to Use application which is good for 6 months. It is difficult, if not impossible, for a competitor to file a lawsuit against misuse of trademark while it’s under Intent to Use, rather than a fully granted trademark. But, an ITU will still stifle competition as the title, words or phrase will be under a temporary trademark protection for up to six months.

Even if an author, developer or group files an objection with the Trademark Office, that case can languish for six months or more without a ruling, leaving the trademark in place as the legal machine slowly moves along. In the book world and especially in the app world, the first 6 months after release is when the vast majority of sales are made. Thus, competition is effectively squashed.

Since Amazon is the largest book marketplace in the world, and it is a U.S. company which must follow U.S. trademark law, manipulating the U.S. Trademark law can be very effective in stifling competition and sales on Amazon.

While it is something that you hopefully won’t run into, because this trademark technique is making major headlines, it will probably be used more often in the book world. To avoid problems, use the online public trademark database to check your title before finalizing your listing and cover.

Remember also that if someone has trademarked a word in your title for the Sci-Fi, or Romance or Horror genre, for example, it doesn’t apply to a book in the Children’s Book category. But if it has been trademarked for kids books, or coloring books, or whatever your genre is, steer clear or be prepared for Amazon to suddenly remove your title.