Trademarks in books and other prose: how to mark and when to claim them

Trademarks confuse writers. Here are some tips on how to address trademarks in prose — and whether you ought to protect your own special names for things with them.

Start with this: I’m not a lawyer. I hope you find this helpful — it’s based on decades of experience as a writer — but if you have questions, please check with a trademark lawyer.

Let’s start with what trademarks protect. A trademark on a product or service indicates that is the genuine product of the trademark owner. I cannot start my own hotel called “The Four Seasons” because the Four Seasons company owns the trademark “Four Seasons” in the category of hotel services. If I were to name my motel in a way that was confusingly similar to theirs, the company could (and probably would) send a cease and desist letter, and if I persisted, sue me, file an injunction to stop me, and attempt to claim damages.

You can’t blame them. They spent years advertising and building a reputation for their exclusive hotel chain and they have every right to protect that investment.

But be aware, trademarks apply only in specific categories, or “classes.” This is why Four Seasons Total Landscaping is not problematic — it’s in a completely different category, so there is no likelihood of confusion. Only a moron would confuse Four Seasons Total Landscaping with the exclusive hotel chain.

How to mark trademarks in text

Here’s how to mark other people’s trademarks in text: don’t. Note that I didn’t put a TM or ® symbol on “Four Seasons” in the prose above — I don’t need to mark other people’s trademarks. (Text would look pretty silly with TMs and ®s scattered throughout.) So long as you don’t somehow imply that you’re affiliated with the company or making products or services for the company, you don’t need to mark trademarks.

You will sometimes see this text on the copyright page in books:

All trademarks, service marks, and company names are the property of their respective owners.

All this does is reaffirm that you’re not trying to claim ownership or to appropriate other people’s trademarks.

As you do fact checking for books and articles, you’ll occasionally get requests to mark trademarks from company lawyers. If you want to mollify them, you can include a trademark notice for their specific trademarks on the copyright page, but it’s not a requirement.

How to mark your own trademarks

If your company has a trademark, you have a responsibility to protect it in prose. All that this requires is that you mark the first use of the mark in what you’re writing.

Let’s take the phrase “Without Bullshit,” for which I now own a trademark in the category of “advertising, business, and retail services” as well as “education and entertainment services.” If you look at the top of this page, you can see the ®, indicating that I’ve applied for and registered the trademark. However, I don’t need to include the ® symbol on any other uses of the term.

You must also include the actual trademark claim in the document. (If you look at the bottom of this page, you’ll see the text “Without Bullshit is a registered trademark of WOBS LLC,” which is the name of my company.)

If you have applied for or intend to apply for a trademark but have not yet received the registration, use the symbol TM (or SM for a service mark). This warns others that you believe you will own the mark, but have not been officially recognized. You only need it for the first use of the mark. Once you receive the registration, the TM changes to the circled R ®.

To keep books neat and free of distracting symbols, the simplest thing to do is put a notice like this on the copyright page:

Without Bullshit® is a registered trademark of WOBS LLC.

That way you get the notice and the mark of first use out of the way without cluttering your prose with extra symbols.

If you omit this notice, others could claim that you are not giving sufficient warning regarding the presence of the trademark. In general, a failure to protect the trademark creates the possibility that others could use it; when you try to stop them, they could suggest that you hadn’t provided sufficient notice to protect it. Insufficiently protected trademarks can become generic terms (like aspirin) to which the trademark owner no longer has exclusive rights.

Again, you only need to do this to protect your own trademarks, and there is no requirement to do so for other people’s trademarks.

Should you trademark your “magic words”?

People often trademark the name of their company, to stop others from using it. If you have a product with a proprietary name (say, DustBuster), you would normally trademark that as well. You can also trademark the visual elements of your mark, such as a logo.

The challenge comes for “thought leader” types who have a proprietary method they’d like to name and protect. This is why Gartner has trademarked “Magic Quadrant,” Satmetrix has trademarked “Net Promoter,” and Forrester has trademarked “Technographics,” (the only word I’ve ever coined to become a trademark).

If you are concerned that your awesome method or technique has a unique name that others will rip off, you could apply for a trademark. That will give you legal protection and the ability to tell rip-off artists to cease and desist.

There are some downsides to registering the trademark, though:

• You’ll have to pick a category, and will only be protected in that category. (I’m not likely to start selling Magic Quadrant frozen pizzas, but if I did, Gartner would not be able to stop me.)
• You need to ensure that nobody else has already applied to trademark the same phrase. If you are wondering if there is a trademark on a phrase, search it with Trademarkia or at the US Patent and Trademark Office’s search site. If the phrase is trademarked in a completely different class or category, you can still apply.
• To get it right, you really should work with a trademark lawyer, and lawyers charge money. (Because of the changing status of trademarks with vulgar words in them — a decision that made it all the way to the Supreme Court — my own trademark registration was an extended quest that cost more than $1,000.)
• You’ll have to capitalize it in running text.
• You’ll have to include the appropriate trademark symbol and copyright notice when you publish or post anything that includes it.
• You can’t protect book titles with trademarks. (You can protect a book series, like the “For Dummies” books.)

If you want to protect prose from plagiarism, copyright it. That’s a completely different protection from trademarks, and is easy to accomplish — just put a copyright notice on the text. You can register it with the Library of Congress if you ever want to sue somebody for copying it. However, copyrights do not protect short phrases that would normally be trademarked.

There’s another problem with trademarking terms. If you want people to talk about and riff off of your terminology, trademarking the term tends to scare them off. It’s hard for things to spread if people are worried about you suing them.

I experienced this myself. In our 2008 book Groundswell, Charlene Li and I created an analysis framework called “The POST Method.” POST was an acronym for People, Objective, Strategy, Technology. This framework immediately became very popular for social media strategists. There were many posts from other thinkers and writers about it, all citing us as the source, which added to the visibility of the concept.

One author created his own variant, which went by the acronym lPOSTm. This annoyed me, because his “l” and “m” steps weren’t parallel to the other steps. He did give us credit. If we’d had a trademark, we could in theory have taken action against him. But arguably, he helped spread the concept just as so many others had.

As you can see, it’s not so simple to decide whether or not to trademark your pet concept and the name you gave it. But now that you know the pros and cons, you can make a smarter decision.