Usage of Trade Marks Question.

Manny · Oct 17, 2011

We have an unofficial workshop manual almost good to go. I am just at the stage of dotting the i's and crossing the t's. The fellow who is doing some stuff with the format and other things for me, made a recommendation:

Comment: I recommend that trademarks be noted on first use, and that a statement regarding trademarks be added to copyright page. (I am not a lawyer – might want to inquire about the proprieties for recognizing trademarks.)

Throughout the book, there are references to the brand of item we are dealing with - let's use "Ford" as an example. Would I need to put [SUP]TM[/SUP] after every use? Or just the first use?

The book title contains the trademark too (together with the word unofficial). For example: "The Unofficial Ford XYZ Workshop Manual".

Also with products I refer to, do I need to note their trade marks? Lets say I used a line like "I use Nescafe coffee", should that be "I use Nescafe[SUP]TM[/SUP] coffee"?

And what might the statement consist of on the copyright page? I can find nothing similar in any of my books up to now.

This will need to be OK in the US and the UK.

Terie · Oct 17, 2011

Your colleague's suggestion is how the company I work for as a tech writer handles third-party registration and trade marks, as well as our own, in publications.

The language my company uses on the copyright page (with identifying elements redacted) is:

<company name> or its subsidiaries in the U.S. and other countries is the owner of numerous marks, including <company-owned product names that are registered or trade marked>. Other names and marks used in this material are owned by third parties.

The company is headquartered in the US and operates around the world, including the UK.

Hope this helps.

IceCreamEmpress · Oct 17, 2011

I can only comment on the US issues, and from the point of view of a writer, editor, and journalist.

Nobody has any responsibility for reproducing trademark, service mark, and other registration symbols. Those are reproduced by the trademark holders themselves as a statement of their intellectual property rights. Sometimes trademark holders request (they cannot require) people to reproduce the symbols in their permissions guidelines, but it looks horrible and there's no reason to do it.

Now, what you do need to do is respect trademarked names by capitalizing them. "He made a Xerox copy of the files" or "She gave him a Kleenex" or "He poured her a Coke" and similar. (Editor and Publisher and the Columbia Journalism Review are full of ads reminding journalists to do just that.)

Calling something the "Unofficial iPhone Hacker's Manual" (or whatever it is) may not be enough to spare you from the wrath of Apple (or whoever the intellectual property rightsholder actually is). I would honestly get legal advice before going ahead with that title.

The "all the trademarks and service marks are owned by the people who own them" statement isn't necessary in the US. I can't speak to its necessity or relevance in the UK. If you want to find some examples of them, I think some of the "For Dummies" series have that kind of statement in the front matter; I've seen them in cookbooks that focus on recipes using prepackaged foods as well.

Manny · Oct 17, 2011

IceCreamEmpress said:
Calling something the "Unofficial iPhone Hacker's Manual" (or whatever it is) may not be enough to spare you from the wrath of Apple (or whoever the intellectual property rightsholder actually is). I would honestly get legal advice before going ahead with that title.

That being the case, how would this book exist that I just found on Amazon: The Unofficial Harry Potter Cookbook: From Cauldron Cakes to Knickerbocker Glory

That is very similar to how I intend to use the manufacturers name in my book title. I just looked inside that book, and there was this disclaimer:

Many of the designations used by manufacturers and sellers to distinguish their product are claimed as trademarks. Where those designations appear in this book and [publisher] was aware of a trademark claim, the designations have been printed with initial capital letters.

This book is unofficial and unauthorised. It is not authorised, approved, licenced, or endorsed by [IP Owner].

Jamesaritchie · Oct 17, 2011

If you're writing an article on the subject, you need to include teh trademark symbol. This holds true for most nonfiction uses. For fiction, no symbol is required.

Not that it's a big deal. If you don't include it, the editor will do so. I've forgotten to do so in a couple of magazine articles, but the editor always remembers. He has to, or the publisher could get in trouble, which would get the editor in trouble.

Some companies actually run ads in magazines on the proper use of trademarks in writing, and this is one of the points they always make.

The trouble is that even when something isn't specifically covered by federal law, state law may vary, and it often does in trademark usage. Putting the trademark symbol after the word is the only way to ensure that you've covered all bases in all states.

Manny · Oct 17, 2011

I have been researching this all evening, here is an interesting quote on the subject written by a lawyer:

Again, the use brand names in fiction is not a sleep-depriving issue. It would be obsessive (and stylistically unpalatable) to use the R-in-a-circle symbol or the TM symbol every time you refer to a brand name in your text.

Source: Rights of Writers

Why the differential between fiction and non-fiction I wonder?

Where does one get a list of UK trade marks anyway? (Edit - here: http://www.ipo.gov.uk/types/tm/t-os/t-find.htm)

IceCreamEmpress · Oct 17, 2011

James, I have written a ton of product journalism, and have never used a trademark symbol, even in the context of an industry trade journal. It's certainly not the norm in mainstream consumer-oriented journalism.

Here's an article from Car and Driver; note lack of trademark and service mark symbols. Here's an article from Women's Day; note similar absences. I could do this all day. It may be the norm in the markets you write for, but it is not the norm in the US newspaper or magazine industry as a whole.

That being the case, how would this book exist that I just found on Amazon: The Unofficial Harry Potter Cookbook: From Cauldron Cakes to Knickerbocker Glory

Perhaps they have permission from the intellectual property rights holders? I have edited cookbooks that were tied into other fictional properties, and the writers secured permission to do that.

On edit: I see from this article that Ms. Bucholz doesn't have any permission from Rowling or Warner Brothers. Note that she thinks that this is why she had a hard time getting the book published. She certainly has a prominent disclaimer on the cover, so.

Manny · Oct 17, 2011

Interesting link IceCreamEmpress. As she is now bringing out another book with "Narnia" in the title, I expect her lawyers feel that she has set a precedent with the previous lawsuit. In the US at least.

The disclaimer on the front cover as well is probably not a bad idea either.

I suppose that is a question for a UK IP lawyer really. *sigh*

We are not much further on with the noting of Trademarks though. :Shrug:

The only concern I have in that regard is with the manufacturer in question anyway. They have a ton of trade marks and are known to be particularly litigious generally. They also lose half the lawsuits they start.

Old Hack · Oct 18, 2011

Manny said:
That being the case, how would this book exist that I just found on Amazon: The Unofficial Harry Potter Cookbook: From Cauldron Cakes to Knickerbocker Glory

That book's listing on Amazon doesn't automatically imply that there were no legal issues to resolve before it got there, nor that its author is safe from litigation now.

Manny said:
I suppose that is a question for a UK IP lawyer really. *sigh*

It really is. You'll need to get solid legal advice before you go ahead and even then you'll not be able to be 100% certain that you'll be safe from litigation.

Manny · Oct 18, 2011

Old Hack said:
You'll need to get solid legal advice before you go ahead and even then you'll not be able to be 100% certain that you'll be safe from litigation.

I realise there are never black and white answers with these things. But an experienced legal opinion is probably needed now. I agree. One can only take precautions, take advice, respect the intellectual rights of others as best as can be, and let that be a defence if the worst happens.

Today I sought out the biggest IP specialist law firm in my city. After being passed from pillar to post, I was told my questions would need to be addressed by a particular senior partner. I looked him up and read his twitter stuff, blog and Linkedin profile. This is slap bang in his area of expertise. So I am optimistic. I figure it may cost an hour of his time at worst.

However, when he called me back my phone wasn't near me. The law of Sod. So we try again tomorrow.

I shall update the topic with a general synopsis of his advice for others passing this way when I can pin him down to an appointment.

IceCreamEmpress · Oct 18, 2011

Thanks for being willing to share your experience, Manny. I am glad to hear you are seeking legal advice--you may be saving yourself money in the long run. Best of luck!

Manny · Oct 19, 2011

I caught up with the lawyer today. I had to send him over a PDF of the book and a copy of the front cover and a list of questions. He will read it all over the weekend and we have a meeting on Monday.

He mentioned that the manufacturer in question is far from the easiest one to please (which I knew already), and are known to speculatively sue people with unwinnable cases simply to obtain interim injunctions to keep stuff they don't like off the market and tied up in the courts.

That sounds fun doesn't it?

Manny · Oct 26, 2011

So for others passing this way, here is the answer to the questions as applicable in the UK.

As IceCreamEmpress suggested, trademarks do not need a [SUP]TM[/SUP] or a ® after them, as long as they are recognised in the legal notices at the front of the book. Similarly, a trademark can be used in a book title of it is unavoidable; as in my case. One cannot write a Ford workshop manual for example, without putting "Ford" in the title. You cant call it "A workshop manual for a car we cannot mention" can you? The emphasis lies with making it certain that you are not passing off or trying to cash in on the brand name and reputation. So in the example of Ford, no similar curly fonts and no blue ovals.

In my case, similar to the Harry Potter book upthread, this has been added to the front cover:

This book is unofficial. That means it is not authorised, approved, or endorsed by [manufacturer].

In case of use to others, below is the revised version of the legal page with personal info removed:

Published by: [name and address].

First published 2011

Copyright © [name], 2011

The moral right of the author has been asserted.

All rights reserved.

Without limiting the rights under copyright asserted above, no part of this publication may be reproduced, introduced into or stored in a retrieval system, translated into any language or transmitted, by any means or in any form (mechanical, photocopying, electronic, recording or otherwise) without the prior written permission of the copyright owner and the publisher of this book.

The publisher acknowledges that "[trademark]" is a registered trademark of [manufacturer] in the United Kingdom, the USA and other countries. “[publisher]” and “[publishers trademark]” are trademarks of the publisher. All other registered trademarks (appearing in this publication with an initial capital letter) are the property of their respective owners.

This book is unofficial. That means it is not authorised, approved, or endorsed by [manufacturer].

ISBN [insert]

Printed and bound in Great Britain

The disclaimer page has been significantly reworded also. However, much of that is specific to the publication in question, so will be of little use to anyone not doing something very similar.

As Old Hack noted, none of that guarantees one will not be sued by a litigious trademark holder anyway, but having taken legal advice, and implemented industry standard good practice, that is a credible defence.

IceCreamEmpress · Oct 26, 2011

Thanks for sharing that with us, Manny! Glad to hear you found someone so expert to field your questions.

Manny · Oct 27, 2011

IceCreamEmpress said:
Thanks for sharing that with us, Manny! Glad to hear you found someone so expert to field your questions.

Your advice was most welcome - not to mention correct also.

This book will also sell in the US. I also wanted a reliable opinion from the other side of the pond in case anything drastically differed there.

I have an old pal who has a background as a copyright lawyer in CA. I was sad that I couldn't reach him this time (he was invaluable for our last book).

However, I had a stroke of luck. Another pal of mine who is a proper publisher was in the US this week. Without name-dropping too much, he has done some deal for some of his stuff with the guys who publish the "for Dummies" guides. We had a chat on Skype and he agreed to run our front cover, legal pages and questions in this topic past those guys over lunch. What a nice bloke to help a pal in such a way!

The informal advice that came back via him from the "for Dummies" people was almost identical to what my UK IP lawyer told me. So I guess I am on the right track.

So, we are almost good to go. I have some final tweaks to do and a couple of print-and-re-reads, then I turn it over again to our very own rather excellent Research Guy for final pre-print format tweaks and a final roving eye looking for any typos and grammatical howlers everyone else missed.

It's still exciting being only a week or two from holding a test copy in my hands.............shame it wont be on Amazon for Christmas, but you can't have everything.

Loretta · Nov 4, 2011

I have a piece I'm publishing as an e-book, and I would like to include, at the beginning of the book, a couple of lyrics from Mack the Knife. (Oh the shark has, pretty teeth dear, and he shows 'em pearly white)...do I need to place the TM or the r in the circle (not sure how to make that on here) to use this, or do I need something even more official?

blacbird · Nov 4, 2011

Loretta said:
I have a piece I'm publishing as an e-book, and I would like to include, at the beginning of the book, a couple of lyrics from Mack the Knife. (Oh the shark has, pretty teeth dear, and he shows 'em pearly white)...do I need to place the TM or the r in the circle (not sure how to make that on here) to use this, or do I need something even more official?

The major thing you need to get is explicit permission from the copyright holder to quote these lyrics. It will almost certainly cost you money to do this, and will absolutely cost you time, energy and headache. Even recording artists have to pay for the use of copyright-protected songs not of their own creation (and, yes, Bobby Darin had to do this). This is an English translation from the Brecht-Weill German original, and is most certainly still under copyright protection. We must have fifty threads here on the use of copyright-protected lyrics, and the general consensus of advice is:

DON'T USE THEM.

caw

Loretta · Nov 5, 2011

Copyright For Song Lyrics

Thank you for the reply, blacbird. Back-spacing out the lyrics

L.

Usage of Trade Marks Question.

Manny

Terie

Writer is as Writer does

IceCreamEmpress

Hapless Virago

Manny

Jamesaritchie

Manny

IceCreamEmpress

Hapless Virago

Manny

Old Hack

Such a nasty woman

Manny

IceCreamEmpress

Hapless Virago

Manny

Manny

IceCreamEmpress

Hapless Virago

Manny

Loretta

blacbird

Loretta