***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:
Apple Insurance of South Haven
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 (http://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 (http://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 (http://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?
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 lives on a 52' Irwin Center Cockpit Ketch (sailboat) with her family and pets. Keep up with her family's adventurous liveaboard lifestyle at GotNoTanLines.com
WritersWeekly.com - the free marketing ezine for writers, which features new paying markets and freelance job listings every Wednesday.
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