Over on the Passive Voice blog there’s a discussion going on about an editing service. A few editors shared their tips about editing. I shared one of mine: a cheat sheet that lists place names, hyphenated words, unusual names and brand names. It hit me, I haven’t seen much mention about the issue of using trademarks and brand names in self-published fiction.
If you write contemporary fiction and you’ve been traditionally published, you’ve probably had a copy editor make changes to brand names. They might change (for instance) “Coke” to “Coca Cola brand soft drink” or turn it into a generic “soda” or “soft drink.” Or maybe they’ve capitalized a word like “Kleenex” or uncapitalized it. Or you might get a note from the copy editor telling you never to use “Nike” or “Pfizer” or some other company name, but to use a generic instead. As a writer telling a story, you might think such nitpicking is nonsense and what difference does it make? Especially since it sounds stupid for a character to say, “Would you like a nice Coca Cola brand soft drink?”
It’s not nitpicky, nonsensical or stupid to the owners of those trademarks and brand names. Companies put a lot of time and money into developing brands. If through common usage the brand or trademark is diluted, it can be lost through genericity. Kleenex is now a synonym for tissue. Xerox for document copying. Thermos for any container that keeps hot food hot or cold food cold. Companies do not want to lose legal options to prevent their brands and trademarks from being misused or abused, which is what happens if a brand becomes generic.
Do they really care about fiction? Sure they do. After the publication of my Intrigue, The Other Laura, the person who writes the inhouse newsletter for the Dupont factory that produces Tyvek envelopes contacted me. I happened to use “Tyvek envelope” correctly in the story. It merited a nice little blurb in the newsletter and a letter thanking me for proper usage of their trademark. On the flip side, I’ve known authors who’ve received nasty grams informing them they improperly used a registered trademark and all further editions should be revised. Which is why copy editors at publishing houses are so nitpicky about the subject. Publishers and writers can be sued if a company feels its trademark has been damaged.
Now, most works of fiction wouldn’t contain trademark infringement. But owners of trademark can also sue for trademark dilution:
In addition to bringing an action for infringement, owners of trademarks can also bring an action for trademark dilution under either federal or state law. Under federal law, a dilution claim can be brought only if the mark is “famous.” In deciding whether a mark is famous, the courts will look to the following factors: (1) the degree of inherent or acquired distinctiveness; (2) the duration and extent of use; (3) the amount of advertising and publicity; (4) the geographic extent of the market; (5) the channels of trade; (6) the degree of recognition in trading areas; (7) any use of similar marks by third parties; (8) whether the mark is registered. 15 U.S.C. � 1125(c). Kodak, Exxon, and Xerox are all examples of famous marks. Under state law, a mark need not be famous in order to give rise to a dilution claim. Instead, dilution is available if: (1) the mark has “selling power” or, in other words, a distinctive quality; and (2) the two marks are substantially similar.
If you misuse a trademark, chances are a company won’t notice. If it does, it probably will not bother suing since you’re such small potatoes it’s not worth the time or money. At most, you’ll receive a letter of warning and/or a request that subsequent editions of the work be revised. If your self-published novel happens to become a best seller and you’re raking in decent money, the company might decide to make an example of you. Even if you win, it will cost you.
Look at it another way. Companies own trademarks. They have a right and a responsibility to protect their property. You wouldn’t want your name abused, misused, diluted and turned into a generic descriptor (upon misreading a street sign as a dirty word, *facepalm*, “Whoops just pulled a jaye.”). Don’t do it to others.
The solution is simple. As you’re editing your manuscript, make a list of actual brand names, company names and products. Then do an Internet search for the company and see if the product or service is a registered trademark. If it is, it needs to be capitalized and the full descriptor should be used. Not, “Want a coke?” but “Want a Coca Cola brand soft drink?” If in doubt, use the generic. “Want a soda?” You’ll save yourself from nasty grams and lawsuits. And who knows? If you get it right, you might earn a little free promotion in a corporation newsletter.
I’m not an attorney. This is not legal advice. This post is a head’s up that as an indie (without a publisher’s legal department backing you up) you need to be aware of trademark law. A good place to start is an Overview of Trademark Law or this Wikipedia article about trademark infringement. To see how one company feels about the issue, look at this article about Twitter.