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  1. psychotick
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    psychotick Contributing Member Contributor

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    Trademarks of Book Titles

    Discussion in 'General Writing' started by psychotick, Mar 11, 2013.

    Hi,

    Thought I'd share with you my misadventures of the last two days. Partly as a lesson of what not to do, partly as a question of how many of you even think about this subject.

    So the guts of it is that yesterday morning, after a very long night going through the second external edit of my book, I pronounced it done and pubbed it on Kindle and Smashwords. And then at about eight o'clock in the morning I went to sleep - happy. At ten thirty I woke up in a sweat and suddenly realised that there might be a problem. My new book was called "Alien". And though it has absolutely nothing to do with space monsters, and you can't copyright titles, I realised the title could be trademarked.

    So after hours, literally hours, of wading through the site for patents and trademarks, I found it, and sure enough "Alien" is trademarked by a certain studio for among other things, fictional novels. Bugger! (By the way if you do a search of the website of the office on "Alien" you get over seven hundred and fifty hits.)

    Now did this mean the book was in danger of being considered in violation of a trademark? I on't know. But on the possibility that it might be, new titles, new covers and new texts were readied and uploaded, and to cut a long story short, (or make a short snappy story title long), Alien Caller was born.

    Ok, so maybe I was stupid. It is after all a big franchise. And in fairness I wasn't the only one. During my search of kindle etc, I found two other novels called "Alien" as well as the Alan Dean Foster one. Don't know if they are older than 1976 and so exempt, or else no one really cares. But it did occur to me that as I went through this process that I'd never thought to check on the titles of any of my other books. An I know that there are other books out there with the same titles. There are three Mavericks for example, and I suppose any one of the other authors could have trademarked them.

    So my questions for you guys, are how many of you actually check these things? Anyone know how much trouble I could have actually been in? Or is it permissable to publish a completely unrelated work with the same title?

    Cheers, Greg.
     
  2. Phoenix Hikari
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    Phoenix Hikari Contributing Member

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    Awwww! I hate it when stuff like these happen. I am glad you fixed it before anything happened not that I know if anything could have happened. I have called my story 'Twisted' and there seem to be a ton of books out there with the same name, so I guess it's good you changed yours to something more unique.
    I think trademarks are not supposed to be used without permission or agreement, because they work more like brands and those are illegal to use.

    I posted here to say congratulations on your publishing and hope it sells well. I suggest you place your book in the three-free days sell thing on amazon, this way people get to read it and leave reviews so other are more willing to purchase it later when they read the positive feedback.

    Another thing is, and that comes from my critical designer eye so you can ignore it, I don't very much fancy the cover. If you wish, I can make you one completely free as a gift for your publishing this book. =)
     
  3. SwampDog
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    SwampDog Contributing Member

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    I checked one of my novel titles, to find that it had been used over the decades by a couple of others. On checking with a friend (published), magazine writers, and on sites under the auspices of the British Arts Council, the answer was always - Call it want you want. (Might not hold good in ALL circumstances).


    Book of the Dead by Douglas Preston
    Book of the Dead by Patricia Cornwell
    Book of the Dead by Tanith Lee
    Book of the Dead by Robert Richardson
    Book of the Dead by Ashley McConnell

    Same result with Circle of Friends - Books and films.
     
  4. chicagoliz
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    chicagoliz Contributing Member Contributor

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    A person or company cannot just take a word out of the lexicon because they have used it for their own commercial purposes. The underlying principle of trademark law is that of likelihood of confusion. For a trademark claim, the owner would have to show either an intent or a likelihood that the use of the word is either intended to make people think that the product is related to the owner's product, or that it is somehow trading on it's commercial success (like if you were marketing Alien cereal or something). They could also show actual confusion.

    In this instance, it's a closer call because we're talking about a market of novels. However, "alien" is still a generic term, that pre-existed the other movie's and novel's existences. My guess is that it would not be a violation of a trademark, but you'd want to confirm this before going ahead and using it. I think you made the right decision in changing the title, even from a practical business standpoint, irrespective of the trademark issue. It's always preferable to have a title unique to your particular work, for ease of readers finding it on amazon and smashwords, etc. And you also have no chance of someone even raising the question.
     
  5. erebh
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    erebh Contributing Member Contributor

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    A friend of mine from Dublin, now living in New York has designed a range of jeans from recycled material - obscure stuff like brown beer bottles etc. A minimum of 60% of his clothes are recycled. He called his lable IANAV - I Am Not A Virgin. Richard Branson has tied him up in court for the last two years for using the word Virgin! My friend is sure he will win and is getting tons of publicity, only his sales are paying his own legal team. He solicitors are asking - What next Branson? Are you going to take on teh Olive Oil industry? Either way, Branson can afford lawyers - do you wanna take a chance against a global brand like the makers of Alien or Circle Of Friends for the sake of your title?
     
  6. mammamaia
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    mammamaia nit-picker-in-chief Contributor

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    i have a hard time believing their proscription actually includes 'fictional novels' since all novels are by definition fictional, even if based on real events...
     
  7. captain kate
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    captain kate Active Member

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    And an interesting fact I just found on a Google search on this subject is that the ship's name 'Nostromo' came from a Joseph Conrad novel, as did the name of the shuttle.
     
  8. captain kate
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    captain kate Active Member

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    Interesting that they have a title under copyright. I just searched the US copyright records and these were the only copyrights:

    visual materials (drawing, symbols, etc)
    posters
    soundtrack
    script.

    Nothing on the title whatsoever. If titles could be copyrighted, then no books could be written...
     
  9. psychotick
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    psychotick Contributing Member Contributor

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    Hi Captain,

    Not copyright - you can't copyright a title. Trademarks - like names such as coca-cola. This is the USPTO listing. And yes Mama, though I hadn't considered the alternative it does cover "fictional novels and short stories" - as opposed to non-fictional ones I suppose.



    Typed Drawing


    --------------------------------------------------------------------------------
    Word Mark ALIEN
    Goods and Services IC 016. US 038. G & S: posters; comic books; fictional novels and short story books. FIRST USE: 19920609. FIRST USE IN COMMERCE: 19920609
    Mark Drawing Code (1) TYPED DRAWING
    Serial Number 74298233
    Filing Date July 24, 1992
    Current Basis 1A
    Original Filing Basis 1A
    Published for Opposition September 7, 1993
    Registration Number 1807443
    Registration Date November 30, 1993
    Owner (REGISTRANT) Twentieth Century Fox Film Corporation CORPORATION DELAWARE 10201 West Pico Boulevard Los Angeles CALIFORNIA 90035
    Type of Mark TRADEMARK
    Register PRINCIPAL
    Affidavit Text SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20040426.
    Renewal 1ST RENEWAL 20040426
    Live/Dead Indicator LIVE

    Cheers, Greg.
     
  10. psychotick
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    psychotick Contributing Member Contributor

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    Hi,

    Here's one of the other books called "Alien" - Note its a short story first pubbed in a newspaper according to the description in 1990, two years before the above patent was taken out. Its also free so good luck with anyone trying to squeeze any money out of its sales.

    http://www.amazon.com/dp/B006578UT0/?tag=postedlinks04-20

    Can't find the other one I'm afraid but I know it's out there.

    Hi Phoenix, thanks for the offer but I'll stick with my cover. I actually quite like it.

    Cheers, Greg.
     
  11. Cogito
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    Cogito Former Mod, Retired Supporter Contributor

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    Copyright is automatic, and does not attach to titles.

    Trademark, on the other hand, must be applied for, and will not be granted for a common word or phrase. I seriously doubt that a trademark could be acquired for the title Alien. But if it were, the scope of the trademark would be severely restricted.
     
  12. Selbbin
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    Selbbin I hate you Contributor

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    Alien can be, and is, trademarked because the 'franchise' of films, books and comics is recognised as a brand, just like Star Wars. It's not trademarked as a title, as such, it's trademarked as a brand covering entertainment products and the related merchandising.

    Edit: Although, looking at the wording of the above trademark notice, the trademark seems to be about the word's use in the logo, not the word in itself. ie: the word Alien in it's distinctive text recognised as belonging to the Alien franchise of entertainment products. So if Alien was written in a completey different way as not to have a recognised connection, it is probably ok.
     
  13. Ian J.
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    Ian J. Active Member

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    The other problem with trademarks is that they are very geographically dependent. What gets trademarked in the U.S. has no automatic trademark anywhere else in the world unless agreements with other geographical areas are in place. So in order to get a worldwide trademark the person/organisation seeking it has a lot of legwork to do in who knows how many countries, with all the costs having to be met as well...
     
  14. mammamaia
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    mammamaia nit-picker-in-chief Contributor

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    a 'patent' is something entirely separate and different from a trademark or copyright... it's only issued for invented objects or original scientific concepts and such, not for words alone...

    the 'word mark' for 'alien' is what has been trade mark protected by uspto, as you can see in the official listing cited above... and that does not mean no one can use the word for a title, or in a written work, but only that the 'logo' can't be used, as selbbin surmised:

     
  15. captain kate
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    captain kate Active Member

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    They can trademark the drawings, posters, type of font, etc etc. However, it is NOT like Coca Cola, which is a company name. People use the work 'Coke' all the time in dealing with cocaine. I guess that means they can sue for that (and a quick history lesson, Coca Cola had cocaine in it when it was started, thus the name.) anytime I or anyone else use it while in court.

    Once again, the word 'Alien' cannot be purely trademarked. It can when referring to the franchise. However, I'll be willing to bet that if I wrote a story called 'Alien' and it had NOTHING to do with their franchise nothing would be said.

    If that was true, then no one could use the word 'trunking' since it's a term about police communications systems, the word 'Halloween,' or 'Friday the thirteenth' in any kind of writing, verbal speak or otherwise because they could sue. It'd tie up the court system even more than it already is.
     
  16. psychotick
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    psychotick Contributing Member Contributor

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    Hi Captain,

    I don't know what to tell you save that it seems to be there in black and white. Alien is a trademarked as a typed drawing, - whatever that means. Since there was no description of the way in which the word was written let alone a drawing of it, I have to assume that it is the word itself that is trademarked. Many of the other trademarks for Alien, oddly enough most commonly for sports gear and fishing stuff, had detailed descriptions of how Alien was written. Some had pictures. And none of them indicated that it was trademarked for books, - but then none of them were owners of books called Alien.

    And even if the trademark could not hold up in court, I am not willing to go to court over it. I don't have hundreds of thousands of bucks spare to spend on lawyers.

    Cheers, Greg.
     
  17. Selbbin
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    Selbbin I hate you Contributor

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    It means a logo made of text. In a very particular form. Not the word itself.

    Regardless, I think your decision is sound.
     
  18. captain kate
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    captain kate Active Member

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    "Typed Drawing" in this context means anything dealing with the logo, image of the alien 'egg' or the particular font. The word 'Alien' isn't. While I'm not telling you to change or not change, just pointing out that a title cannot be copyrighted.
     
  19. psychotick
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    psychotick Contributing Member Contributor

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    Hi Guys,

    I think it goes beyond just the idea of a logo made of text. Note that it says that the type of trademark is a 'word mark". I googled this from the wiki on word marks.

    A wordmark, word mark or logotype is usually a distinct text-only typographic treatment of the name of a company, institution, or product name used for purposes of identification and branding. Examples can be found in the graphic identities of the Government of Canada, FedEx, Google, and Wikipedia. The organization name is incorporated as a simple graphic treatment to create a clear, visually memorable identity. The representation of the word becomes a visual symbol of the organization or product.

    In the United States and European Union, a wordmark may be registered, making it a protected intellectual property. In the United States, the term wordmark may not only refer to the graphical representation, but the text itself may be a type of trademark


    Note the last line. By my reading this means that the word itself may be trademarked by itself and not necessarily as part of a graphical representation made of text, and I think that's what this is.

    Cheers, Greg.
     
  20. evelon
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    evelon Active Member

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    The word 'Alien' was around before the film. I don't think you can trademark something that is already in existence. That protection is designed for something that you have invented/created, otherwise what's to stop Cadbury's trademarking 'chocolate'' or McDonalds trademarking beefburger?
     
  21. chicagoliz
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    chicagoliz Contributing Member Contributor

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    A word could be trademarked if it is not descriptive of the product itself, but used to otherwise identify it. For example, I believe that Kraft has a trademark for "Philadelphia" with respect to its cream cheese. Another company could not put the word Philadelphia as a prominent descriptor of its cream cheese. However, Kraft has no ability to prevent someone from putting Philadelphia on a t-shirt and selling them near the Liberty Bell. (Irrespective of the idea that the City of Philadelphia could have zoning issues with the selling, etc., but that's not relevant here.) Nor could Kraft have prevented whatever motion picture studio released the movie Philadelphia that was released about 20 years ago from using that name.
     
  22. psychotick
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    psychotick Contributing Member Contributor

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    Hi,

    I agree but the problem is that I'm a writer. I write books. And the trademark is for Alien the book as well as the Franchise. I'm sure Fox wouldn't give a fig if I developed a line of Alien cream cheese and sold it in Philly. But as to writing a book specifically called Alien, which is a fictional novel and selling it, that's too much. Likewise if I made T shirts, Fox has a trademark for Alien on T shirts as well. So I would be in trouble if I made T hirts with Alien on the front. Not to mention computer games an films etc. They had quite a few different trademarks for Alien.

    Also it occurs to me that even with other examples its the words that are important as well as the design of the logo. Coco Cola for example. I'm fairly sure that if I trie to sell a fizzy drink named Coco cola, even if the logo was different, I'd be in trouble.

    Cheers, Greg.
     
  23. shadowwalker
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    shadowwalker Contributing Member Contributor

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    If one does a search for the word "alien" within trademarks, you're going to find a lot of them. One site for trademark searches listed 699, including abandoned, applied for, and successfully registered. I don't think I'd worry about it.
     
  24. evelon
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    evelon Active Member

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    But Coco cola is a word made by the company for the job. It's their word - they created it.
    If you put Alien on a t-shirt along with a figure and try to make either the word or the figure look anything like the Alien films, books, merchandise etc., then obviously you will run into trouble. But no-one can take a pre-existing word, whatever it is, and claim ownership. What they are doing is claiming ownership of their own creations, (ie figures, logos) as far the film, book, figures, books etc. go.

    I could be wrong - in which case we should all go out and trademark the word pilot, or doctor etc. etc. We could make a fortune in licences.

    Just as an afterthought - Dr. Who is copyrighted or trademarked as Dr. Who. That doesn't mean that you can't use Doctor, Doc, Dr. etc. It just means you can't use Doctor Who.
     
  25. mammamaia
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    mammamaia nit-picker-in-chief Contributor

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    http://www.amazon.com/dp/B006578UT0/?tag=postedlinks04-20

    ...that should settle the question of legality re using the title...

    ...this debate is going nowhere... if some of you don't want to trust info given here, the only way you'll prove it right or wrong is to consult a literary attorney...
     

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