Posted on 05/12/2018 at 09:00 AM by Jeffrey Bruner
The past week has provided great case studies on how to handle a dispute over a trademark and on what NOT to do.
Let’s start with the good guy.
The British company Rebellion, which publishes games, books, and comics, had a lawyer obtain a trademark to protect its name. Well, the law firm did a very thorough job – everything under the sun is included in the application. Including books.
But co-founder Jason Kingsley, as soon as he learned about it, sought to make things right:
Kingsley just wants to protect his company’s brand, not to go after authors who have a book with “rebellion” in the title. If he follows through on his word, all should be fine.
At the other end, we have Faleena Hopkins, who got a trademark for a series of books with the “cocky” brand, but then proceeded to tell authors with the word “cocky” in the title of their books to either retitle them or face legal action.
As you might imagine, all hell broke loose. Then, after the backlash happened, she positioned herself as a martyr.
The short, I-am-not-a-lawyer explanation of this is:
1. Trademarks won’t prevent you from using a word in a title.
2. But … if you publish a series of books with the same word in the title (Cocky Firefighter, Cocky Cop, Cocky Billionaire, Cocky Accountant, Cocky Masseuse, etc.), that might be susceptible to a legal challenge. (Remember, the trademark is for a series of books.)
3. If you ever get a letter threatening legal action, don’t do anything before consulting with a lawyer. Legal clinics are a great option if money is tight.
For a longer legal discussion from an actual intellectual property lawyer (and the guy who married one of my wife’s college roommates), head here.
Categories: Behind the scenes