Disclaimer: DIY MFA does not provide legal, tax accounting, or financial advice. In making decisions regarding whether and when to file intellectual property (IP) protection or other decisions that may have legal and/or financial ramifications, we strongly urge you to speak to a licensed IP attorney for the most accurate information.
Have you ever wondered how to protect your intellectual property or avoid infringing on someone else’s work?
Today, we’ll cover a primer on intellectual property in the U.S., with a specific focus on registering wordmarks, which can be especially relevant if you’re setting up a new publishing imprint.
I’m not a lawyer so I’ve invited Intellectual Property attorney Deborah Mortimer to help co-author this article.
First, let’s start with some basics…
The Basics: Copyrights and Trademarks
After all your hard work creating and writing, you’d like protection for your intellectual property, right?
I remember my pride upon successfully registering my first novel at copyright.gov. At that time, it was just $65 to submit a standard copyright application. This is a great initial step to take when your manuscript is published. Or you can submit a pre-publication application. Even without filing, your published work technically still enjoys copyright protection although it certainly couldn’t hurt to hold the official registration!
In this article, we’re going to dive into a different type of protection, one I’ve had familiarity with through my years leading packaged goods brands: trademark protection.
What is a Trademark?
Intellectual Property attorney Deborah Mortimer, who’s licensed to practice in New York and New Jersey, explains that trademarks (or ‘marks,’ for short) are a type of intellectual property. It can be any word, phrase, symbol, design, or combination of these things used to identify the brand source of products and/or services. Your “brand” distinguishes your products or services from those manufactured or sold by other third parties. Basically, it’s how consumers recognize you in the marketplace and distinguish you from your competitors.
Only brands are eligible for trademark protection. That means whatever brand you use must be used in connection with products and/or services.
So why does this matter to us as authors?
When Might Authors Benefit from Trademark Protection?
If you’re an independently published author, you may decide to create an imprint name. This imprint name is a brand that can be trademarked in connection to the publishing services you provide, even the books you sell.
Maybe you’re the author of a series of books or you use your book title in connection to promotional material like t-shirts or as the brand of your coaching course. These are all situations where trademark protection can be relevant.
Although this isn’t a mandated step in setting up an imprint, there are two main reasons to look into trademarks: first, to protect your marks, and secondly, to ensure you’re not infringing on someone else’s mark.
There are two types of trademarks that can be protected: word marks, and design marks. We’ll start with word marks and come back to design marks in a bit.
Start with a simple search
Let’s say that you’re ready to start your own imprint and have brainstormed a list of publishing names to use on the copyright page of your manuscript. You can start by determining if there are obvious violations of someone else’s trademarks, and avoid those names.
(The strategies to brainstorm names is a whole other topic which I may cover in another DIY MFA article!)
One early step is to determine which names should clearly not be pursued. You can begin with a search engine. Put in the names you’re interested in and see if other people are already using them. To take it a step further, go to uspto.gov and launch a simple search in their Trademark Electronic Search System, or TESS.
Look for names that are similar to yours or could cause consumer confusion within your class of trade. These are the ones to strike from your list.
You can take this same approach for taglines.
What’s a comprehensive search?
If you’ve narrowed down to a name and slogan that have passed your own simple search, congrats! But you’re far from done. Comprehensive searches are needed to fully assess the risk of the word mark(s) you’re considering.
For people without professional experience doing this, legal counsel who specializes in intellectual property can be critical, as they have the means to perform a more thorough search, which increases your likelihood of proceeding to registration without major complications in your application.
In addition, the filing process can be lengthy and fraught with complexities. There are 45 classes of trade to choose from, some for products, and some for services. You can choose from two types of applications: TEAS Plus and TEAS Standard. Although the TEAS Plus may seem appealing for being more streamlined and cheaper, it doesn’t permit customization of the services and/or products that are specific to your business.
Moreover, if you have an idea for an imprint but have not started using it yet, you can still protect it. Filing an “Intent to Use” application gives you the benefit of preserving your mark, while giving you time to develop your brand. Keep in mind, though, that in order to register a mark, it must actually be in use.
Professional legal services are invaluable for navigating the comprehensive search and the filing process.
This article won’t deep dive into design marks but it’s good to be aware that you can also protect the visual design of your word mark and/or slogan. USPTO will require images showing the design mark in use, as well as a written description of the design. As an example, here’s Hachette’s logo with its unique partially open “H” and company name in a distinctive lower case font:
Again, you can work with professional legal advisors to help protect your design marks and ensure you’re not infringing on others’ rights.
If you enjoyed this article, please share your own experiences with intellectual property protection for authors in the comments below!
*Note: this article does not replace legal advice. For intellectual property counsel, seek a professional.
Deborah C. Mortimer is the Principal Attorney at Mortimer Legal, PLLC, NY based boutique intellectual property law firm focused on protecting the brands, ideas and creative portfolios of entrepreneurs, businesses, authors, illustrators and other creatives. Deborah is a legal expert in intellectual property law, blending an eclectic background of legal expertise in trademarks and copyright services with a background in writing and publishing. She’s been there before from both sides of the fence. Mortimer Legal PLLC, services clients nationwide.
Carol Van Den Hende is the award-winning author of the Goodbye, Orchid series, a public speaker, and MBA with 20+ years’ experience in marketing, strategy and insights. Carol is passionate about simplifying marketing concepts into actionable steps that authors need for publishing success. Please sign up for Carol’s newsletter at https://carolvandenhende.com/contact or linktr.ee/cvdh.