***DISCLAIMER*** – I AM NOT AN ATTORNEY. I AM SIMPLY SOMEONE WHO HAS PUBLISHED MORE THAN 8,000 BOOKS FOR A VARIETY OF AUTHORS OVER THE PAST 18 YEARS. THERE ISN’T MUCH I HAVEN’T SEEN, INCLUDING THREATS BY TRADEMARK TROLLS. IF YOU HAVE SPECIFIC LEGAL QUESTIONS ABOUT TRADEMARKS, PLEASE CONSULT WITH YOUR ATTORNEY.
Some of the facts below have been changed to protect the identity of the author involved. While this author has done nothing wrong, since this appears to be an aggressive trademark troll, I don’t want to invite further threats and abuse against the author by exposing identities.
~~~~~
Last week, an author I know forwarded an email he received from overseas. It contained a (false) accusation of trademark infringement. The accuser has a website name that uses an unusual word, but not an entirely original word. The word is in the dictionary though I’ve never heard anyone use it before. The accuser appeared to be upset because the word also appears as part of the author’s book title.
The website of the accuser is for a service that has absolutely nothing at all to do with books, or fiction, or publishing, or anything. He’s a manufacturer of household goods.
The author thought he was going to have to publish a completely new book, with a new title, which can be expensive.
Here’s my response to the author:
Hi (name removed),
You should run this by an attorney before you spend money publishing a new book. First, the man who emailed you sells household goods. He’s not a book publisher, nor does he have a book by that name. There is no way at all that any consumer would get confused between the two.
Second, it’s not the exact same word. The title of your book has part of the word in question, included only as part of a longer word.
Apple owns the trademark to the word “Apple” yet more than 9,000 other companies use the word “Apple” in their trademarked names. Examples:
Farmstand Apple
Apple Insurance of South Haven
Apple Fresh!
Apple Box
There are thousands of others.
The word in question is not an entirely unique one and it is used elsewhere as well. Here’s an example (link removed).
There are several gamers online using the word as their names.
The word is used on several foreign sites (links removed).
Third, he’s in Indonesia. You’re not and your book wasn’t published there.
Fourth, I searched and that word is not trademarked in the U.S.
Per my understanding of the law (remember, I’m not a lawyer and this isn’t legal advice), even if he chose to trademark it now, he couldn’t stop you from using the name because you were already using it before he trademarked it. You can search U.S. trademarks HERE (https://tmsearch.uspto.gov/bin/gate.exe?f=searchss&state=4801:kahhpz.1.1).
Fifth, I don’t see that he’s registered the trademark in Indonesia (https://www.wipo.int/branddb/id/en/), either.
Sixth, there IS a German trademark for the word but it’s not owned by the man who contacted you. It’s owned by (company name removed).
So, it appears the guy who contacted you may actually be violating someone ELSE’S trademark.
Either this guy doesn’t understand how trademarks work or he’s a troll who’s trying to extort money from you.
If it was my book, I’d send a reply email back to him and tell him (word removed) and (book title removed) are two separate terms and that nobody would confuse an online retailer of household goods with a book.
If he continues to argue with you, sending another email telling him there is no evidence that he has trademarked the term in the U.S., nor in Indonesia, nor is there any evidence that he has registered a global trademark (https://www.wipo.int/branddb/en/) for the term. And, tell him a German company HAS trademarked the word so it appears he is violating THEIR trademark. Tell him you’ll be happy to contact that other firm to alert them that not only is someone using their trademarked name, but that the individual is threatening others with trademark infringement over a term they do not own. .
If he has no proof of a registered trademark, he’ll have lost all his footing in this fight.
If he continues to argue with you, tell him to have his attorney contact you. He can then pay somebody a few hundred bucks an hour to go through all your emails.
I think this guy is on a power trip and doesn’t understand trademarks, or he’s a troll who is going to try to extort money from you. He is trying to force you to do something that, according to my understanding of trademark law, is not required at all.
I suspect he’s going to skulk away after you prove you know more about trademarks than he does.
Many moons ago, a competitor contacted me, trying to get me to stop using the name of one of my companies. Back then, I was a single mom with a tiny website. They said they wanted me to hand over my website to them. I refused, telling them I was a single mom of three with no resources. I then said, “Sue me.”
I never heard from them again.
I get very angry when I see people trying to bully others when it appears they have no legal standing on the issue. Please, let me know what happens.
Oh, and read this great article:
Trademark Bullying: Defending Your Brand or Vexatious Business Tactics?
RELATED:
Avoiding a Trademark Infringement Lawsuit is SO Easy!
Common Names vs. Trademarked Names
I Have a Trademark! How Can That Church Use My Property?!
Is That Lawyer Who’s Threatening You…Really a Lawyer?
Writers! Think You Won’t be Stalked or Harassed? Think Again! By Denise Reich
Got questions about Print On Demand and Self-publishing? Ask Angela Hoy.
About The Author
Angela Hoy is the publisher of WritersWeekly.com, the author of 19 books, and the co-owner of BookLocker.com (one of the original POD publishers that still gets books to market in less than a month), PubPreppers.com (print and ebook design for authors who truly want to self-publish), and Abuzz Press (the publishing co-op that charges no setup fees).
Angela has lived and traveled across the U.S. with her kids in an RV, settled in a river-side home in Bradenton, FL, and lived on a 52 ft Irwin sailboat. Angela now resides on a mountaintop in Northwest Georgia, where she plans to spend the rest of her days bird watching, gardening, hiking, and taking in all of the amazing sunrises.
WritersWeekly.com - the free marketing ezine for writers, which features new paying markets and freelance job listings every Wednesday.
BookLocker.com - According to attorney Mark Levine, author of The Fine Print, BookLocker is: "As close to perfection as you're going to find in the world of ebook and POD publishing. The ebook royalties are the highest I've ever seen, and the print royalties are better than average. BookLocker understands what new authors experience, and have put together a package that is the best in the business. You can't go wrong here. Plus, they're selective and won't publish any manuscript just because it's accompanied by a check. Also, the web site is well trafficked. If you can find a POD or epublisher with as much integrity and dedication to selling authors' books, but with lower POD publishing fees, please let me know."
Abuzz Press offers FAST and FREE book publication, but only accepts a small percentage of submissions, and only works with U.S. authors.
PubPreppers.com - "We Prep, You Publish!" Print and ebook design for authors who truly want to self-publish. Offers formatting and design services only, and then provides simple instructions for authors on where to sign up to have the print and ebook editions printed/listed/sold. Cut out the middle man. Keep 100% of what bookstores pay for your book!
Angela's POD Secrets Revealed Series can be found HERE.
Have a POD Book with another publisher? See if BookLocker can give you a better deal. (BookLocker offers "disgruntled author discounts" to those who want to move from other POD services.)
See BookLocker's publishing packages HERE.
ANGELA ON TWITTER https://twitter.com/AngelaHoy
BOOKLOCKER ON FACEBOOK - Provides links to free excerpts!
https://www.facebook.com/booklockerbooks
ANGELA ON FACEBOOK
https://www.facebook.com/angela.hoy.750
ANGELA ON LINKEDIN
https://www.linkedin.com/in/angelahoy/
Angela is the creator of the Original 24-Hour Short Story Contest!
https://24hourshortstorycontest.com/
Read More Of Angela's Articles HERE
HowMaster: The Writer's Guide to Beautiful Word Crafting
Author Linda M. Gigliotti draws from years of practice as a private
writing tutor in the guidebook that teaches writers how to format visceral
writing that pulls readers into their book. She explains with instruction
and samples of published works how to craft writing that come to life in the reader's mind.
HowMaster is a wise choice for the writer who wants to weave words around the reader’s heart.
Author Linda M. Gigliotti draws from years of practice as a private
writing tutor in the guidebook that teaches writers how to format visceral
writing that pulls readers into their book. She explains with instruction
and samples of published works how to craft writing that come to life in the reader's mind.
Read more here:
http://booklocker.com/books/2304.html
Pingback: Trademark Trolls | katiemerkelwriter
You are so COOL!
Book titles usually aren’t trademarked. Anyone can use your title for their book with impunity.
Unlike copyright which is automatic, trademark requires a lengthy and expensive process so trademarks for titles, character names, etc. usually happen when a book or book series is to be a movie like the Harry Potter titles and characters.
Many US state bar associations have a group of lawyers who volunteer their time pro bono to artists and writers. That’s a good place to start for questions.
How lucky we all are to have you in our corner.
Good advice, but I’d seriously consider a different approach. Treat this as mere harrassment and ignore it. Answer and you open a conversation that’ll always be troublesome and could get costly if you have to call in a lawyer to reply to his lawyer. Since he is in far-away Indonesia, any legal action he might take would be expensive and troublesome. Don’t make his task any easier. If he doesn’t have your phone number of mailing address, don’t give it to him.
A situation I found myself in was different, since it involved a lawyer, but I was once hassled by a lawyer who was acting way out of bounds and getting pushy. I never replied to him. He worked for a large international law firm, so I contacted that firm’s ethics person, presented the issue to him, and left it at that. I was never bothered again.
–Mike Perry, Inkling Books