Adventures in Self-Publishing: Brand Names and Trademarks

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.

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14 thoughts on “Adventures in Self-Publishing: Brand Names and Trademarks

  1. Interesting post.

    It struck me, while reading this, that the using brand names as generic descriptors (Kleenex, Xerox, Glad Wrap) is mostly a North American phenomenon. In the UK & Ireland, we would always say tissue, photocopy, or cling film (which is an interesting term in itself). The only one I can think of in common usage over here (aside from googling something, which is a recent development) is our verb “to hoover”. We never use vacuum. Perhaps because we never had J. Edgar in our lives. Otherwise to hoover something could mean something else altogether.

    Dave

  2. Americans can’t seem to help playing with words, David. Maybe it’s because American English is such an amalgam of different languages we can’t help but consider the whole thing as fluid. In the first draft of the article I caught myself using “Google” as a verb. What delicious irony it would have been to earn a nasty-gram from Google about my improper usage.

  3. Thanks for this. I have a character who thrives on Twinkies and Ho Hos. Some not completely completely complementary things are said. Guess I’d better check out the trademark issues.

    Or I could just use “Twinkles,” which is what my spell check came up with, right now.

  4. i started thinking about this again the other night, after reading marina’s halloween (*cough* christmas) story. near the end, there’s a scene where a girl “…took something out of an ashtray and lit it with a Bic.”
    now. to me, a ‘bic’ is a pen. a biro. a ball point pen. i actually favour the a black ink bic greatly for sketching, sometimes in preference to pencils! but im digressing. the fact that she lit something with a ‘bic’ confused me. was this some drug habit i didnt know about? i re-read it, then scanned the next sentences… i realised that a ‘bic’ MUST be a lighter. then i carried on reading.

    ive since googled bic lighters and found that i do recognise the logo. i just never knew those particular style of lighters were called bics. so, my ignorance caused me to stutter in the reading of the story. not a massive deal, but losing the flow when you’re really into a piece is a shame.

    i suppose it is an with issue of generic descriptors. if you dont know the brand and there aren’t enough clues to make an immediate assumption on what the product may be, then theres a problem.
    to illustrate, i just read quite a lovely piece of prose on another blog which had the line, ”sloppy joes stuck to the back of the fridge.” i havent the first notion what a sloppy joe could be.

    my point…? im not sure to be honest. did i make it already? it was certainly to do with specific words, and regions, and cultural understanding. and branding too. hmmm..

    • oh dear, that’s quite an essay. i apologise.
      im sick with man-flu [do you have that in the states too?]. and when im like this i tend to ramble somewhat. i suspect i’ll be quite embarrassed by all this in the morning
      :/

  5. Heh. Say, “Flick your Bic,” to any American and they’ll know exactly what you mean. It’s part of the popular lexicon. Sloppy Joes are nasty sandwiches made of ground beef, sweet tomato sauce, green peppers and onions served on soft buns. Ick squared. But that’s very American, too.

    I run into the same problem when I read UK authors, especially the ones who go deep into regional speech and dialects. Stuart MacBride’s Aberdeen characters are always eating butties. I don’t think I want to know what those are, but they sound as nasty as sloppy Joes.

    I have never heard of man-flu. Is it something I want to know?

    • sloppy joes sound delightful! lol, even the english have trouble with some of the scottish dialects. however, a buttie is simple an all-purpose term for any sandwich.

      i find urbandictionary.com comes in quite handy when faced with these regional confusions. it describes man-flu as: the condition shared by all males wherein a common illness (usually a mild cold) is presented by the patient as life-threatening.

  6. Ah, so when the Old Man has the sniffles and he is using his cell phone every five minutes to call from his chair or the bed down to where I am trying to work in the basement, because he needs a cup of lemon tea or some soup or for me to take his temperature or sit and tell him story, then he’s actually dying of man-flu and I should be sympathetic. Got it.

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  10. When I was growing up in Australia a sloppy joe was a sweatshirt. We almost never put them in the fridge (at least, not on purpose). But then I’m pretty sure younger Australians would be puzzled to hear that someone was wearing a sloppy joe. So it’s not just cultural, but generational as well!

    In Australia we say tissue (not kleenex) and photocopy (not xerox), and vacuum, but we do understand hoover as both noun and verb if someone uses it that way. In fact, my brother had a dog named Hoover, as a tribute to the dog’s eating technique.

    Oh, what a tangled linguistic web we weave… 😉 It just goes to show that we need to be careful if we want our writing to cross national borders — and not only because of the trademark issues!

    • Hi, Belinda. I know what you mean. I’m a huge fan of UK crime writers, and I’m always fascinated, and often puzzled, by the slang and regional food items and name brands. I can usually puzzle out what they mean through context, but some things will remain forever a mystery (though it doesn’t lessen my enjoyment a bit).

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