Page 1 of 2 1 2 LastLast
Results 1 to 10 of 14
  1. #1
    Join Date
    Mar 2019
    Posts
    17

    Default Rights to a Book Title That is Later Trademarked

    If a single book title has first use, but is not trademarkable since itís a title of one book, and a company comes along and gets a trademark for that name (the title of that book) and has a brand built around that name, and then the original book gets a complete update, a new cover, new content and a new ISBN (which indicates a new product), does the company who published the book still have first use rights since it is now a new product?

  2. #2
    Join Date
    Jan 2006
    Posts
    38,728

    Default Re: If a Single Book Title Has First Use, but

    why Don’t you explain your underlying situation and question. As written your question doesn’t make a lot of sense. Bottom line: if the name has become a trademark, then it is a trademark. If you wish to know the claimed first use in commerce, review the entry on the TESS website.

    Based on what you have asked, I suspect you have used the name sometime between when it was first used and when it was recognized as a trademark and you’re being called out on the use.

    Your question of when first use occurred is self answering. It was first used in commerce when the applicant first used it in commerce. Since a trademark applies to the logo or name itself and not to the specific product, the “new” book use doesn’t change the fact it was used previously.


    Here is a publication that speaks to the issue:

    https://www.bitlaw.com/source/tmep/903_02.html

    I am guessing a more specific answer to your question will be found in the research of secondary meanings of trademarks. i belive you will find your answers if you research the terms “secondary meaning in trademark law”. Names do not have an initial claim for trademark protection but can earn such if they become known as an identifier as a secondary meaning. The protection will extend to all use by the owner of the mark, including the historical use prior to its acceptance as a valid mark due to a secondary meaning. That doesn’t mean others use during that period are automatically prohibited. It will generally prevent any future use though

  3. #3
    Join Date
    Mar 2019
    Posts
    17

    Default Re: If a Single Book Title Has First Use, but

    Thank you for your response.
    I don't want to be too specific since this is a public forum.
    To be more clear, the book with a single title (not a series) has not achieved secondary meaning and does not have a trademark. The other company did obtain a trademark (though it was after publication of the book).
    According to the case HERBKO INTERNATIONAL, INC., Appellant, v. KAPPA BOOKS, INC., the court ruled that HERBKO can receive the trademark since Kappa only had a single title that did not achieve secondary meaning. The case here is the same.

    The issue is this; since the book was redone with a new cover, ISBN and content, is it still considered first use? On one hand the publishing company did have it first, however, when a new ISBN is issued it is (according to Bowker the company who issues ISBNs) considered a new product. This would be akin to KAPPA (after the TM was issued to Herbko) creating a new product with the trademark that was issued to Herbko.

  4. #4
    Join Date
    Jan 2006
    Posts
    38,728

    Default Re: If a Single Book Title Has First Use, but

    If the name has achieved trademark status, then the name is a trademark. It isn’t that the book is trademark protected but the name is.

    If another company has obtained a trademark using the same name, then the second company owns the mark. It has no effect on the original book. It does prevent author of the book from using the the trademark anymore in subsequent products. It doesn’t prevent them from using it in reference to the original book.

    In this case first use (of the original author of the book using the name) has no meaning since the first user of what eventually became a trademark is not who is claiming ownership of the trademark rights other than the use for that book was preexisting and allowed to be used on that book.

    The only question remaining is:

    is this new updated version of the original book entitled to use the trademarked title.

    Im not clear on how a new book can be the old book. The original book is what it is. The copyrights held in the original book cover only what was in the original book. If there are alterations, it is not the same book.


    a new cover won’t change anything. New content, depending what you mean precisely, may make it a new product which would not be able to use the trademarked name. If you mean something like a new chapter was added to the original book, then it’s possible it would be allowed since we are still dealing with the original book. If the author is simply slapping the original name on a new book and claiming it is the original book, it isn’t likely to fly

    can you try to explain the additions and alterations to the book better?


    this will all also depend on how aggressive the owner of the trademark rights is

    and nothing prevents them from taking action regardless of whether it is an actual infringement or not. In fact, the owner of a trademark is obligated to defend their rights lest they can eventually lose them. That makes owners of well known marks be more aggressive in defending their marks.

  5. #5
    Join Date
    Mar 2019
    Posts
    17

    Default Re: If a Single Book Title Has First Use, but

    The book is a work of nonfiction, it is a educational type book for students. The changes include over 100 added pages, new artwork (from BW to color). Some of the older exercises remain, however, they are improved by the new artwork and color.

    You may have figured out that I'm the owner of the trademark and the original book does not belong to me. I had no idea of its existence when I filed for the TM. In fact, when I was made aware of the title (which most definitely causes brand confusion), I found the publishing date was listed all over the internet as one year after I was in use of the title (and the TM came about a year later). I thought I had first use. The reason for this is that the other publisher assigned a new ISBN to the original book and then reused the ISBN for a different title (so the online book stores had a later year listed). So I was unable to determine the actual publishing date of the book. This is something that publishers are not supposed to do. An ISBN should never be reassigned to another book once it has been used. You should only assign a new ISBN for a new edition (to which you would declare on the cover that the title is another edition so that the public would know there is a prior edition).

  6. #6
    Join Date
    Jan 2006
    Posts
    38,728

    Default Re: If a Single Book Title Has First Use, but

    You apparently do have first use, as a trademark. That is why your registration was accepted. Their “first use” is irrelevent because they were not seeking trademark registration or even acknowledgment as a trademark (trademarks do not have to be registered to be valid).


    im not clear on your issue though. You can’t change what happened prior to your first use in commerce (with the limited exception if you filed an intent to use registration). If the author/publisher has issued a new product using your trademark, start the process of objecting to their use as infringement.

    The only product eligible to have your trademark associated with it would be the original book and you stated that was as the title of the book. They can’t produce another book using your trademark (accepting this is in the same market sector) I would argue that a second edition is a new product and as such, cannot use your trademark.

    Im not sure where your isues with the isbn come into play. That doesn’t really matter that I can see other than you claim it creates confusing dates. The isbn does not make a new product become the old product. You might research to discover the copyright registration of the original book and any subsequent products using your trademark.



    Something you wrote does confuse me. You stated their first use was about a year before the known date of publication of the book. You said you were using the title...

    im confused in thst statement. Did you mean that simply you had been using your trademark which is the same as the title or is it suggesting you are claiming the title as a trademark because you’ve used it as a book title. A trademark is a company or product indentifier. If you have not used it as such, it would appear your registration was improper. If your registration is improper, it is surely subject to legal challenge as being claimed as a trademark.


    Additionally, if they claim it was used after your claim as a trademark, then you should have filed an objection with them claiming infringement.

  7. #7
    Join Date
    Mar 2019
    Posts
    17

    Default Re: If a Single Book Title Has First Use, but

    I'm sorry to be confusing.

    They published their book, I then created a product with the same title (a year later) and trademarked it (another year later). My product includes a book as well as software and other items that go with it (I believe it is a brand). Just this year they published the new edition (using the trademark that I own).

    Every few weeks I get asked by customers if I'm affiliated with the company that had the original title, so I know there's brand confusion.

  8. #8
    Join Date
    Jan 2006
    Posts
    38,728

    Default Re: If a Single Book Title Has First Use, but

    have you contacted them at all? It may be possible they are not aware or your trademark. If you have contacted them, whatnwas their response?

  9. #9
    Join Date
    Mar 2019
    Posts
    17

    Default Re: If a Single Book Title Has First Use, but

    Well, I sat on this for a while (like a few years), and then, knowing I was obligated to protect my TM (that and another question about my product being associated with theirs) I did send a Cease & Desist letter.
    Their response was to inform me that they had first use, then they invoked the Lanham Act, claimed their internet sales gave them geographic area over the entire country, and then they demanded that I turn over my trademarks, my URL, all profits, mailing lists, etc. And then change all products that use the marks (all within 15 days) and destroy all inventory. So harsh.
    I think I had a mini heart attack, lol.

    To be honest, if they came back and just said they had first use, I would have been surprised, and then let it alone.
    But the harshness of their demands really got under my skin, which is why I am wondering if their new edition is considered a new product.

  10. #10
    Join Date
    Jan 2006
    Posts
    38,728

    Default Re: If a Single Book Title Has First Use, but

    Their first use, unless they are claiming trademark rights, is irrelevent regarding future use.

    The statement you quote shows they are claiming trademark status in the title. If the only use was for,the title of the book, I don’t see it.

    Is,there something other than the title of this book where it’s used? Does it somehow identify their company or products from their company?


    So, if you wish to retain your trademark, you’re going to have to defend it. Time for an attorney.

    1. Sponsored Links
       

Page 1 of 2 1 2 LastLast

Similar Threads

  1. Trademarks: Can You Use the Name of a Business in a Book Title
    By johnbrown in forum Intellectual Property
    Replies: 5
    Last Post: 03-12-2017, 08:53 AM
  2. Trademarks: Using a Trademarked Name in a Book Title
    By penguinsfan in forum Intellectual Property
    Replies: 1
    Last Post: 05-16-2016, 08:04 PM
  3. Copyright Law: Can You Use a Song Title As a Book Title
    By GJI in forum Intellectual Property
    Replies: 1
    Last Post: 06-17-2014, 01:31 PM
  4. Trademarks: Usage Rights for Non-Trademarked Terms
    By ItStaysYang in forum Intellectual Property
    Replies: 2
    Last Post: 12-12-2013, 11:30 AM
 
 
Sponsored Links

Legal Help, Information and Resources