Q: The one word title for my intended novel is the same as a published U.S. 4 book series. Could I be infringing trademark?
A few points:
• The series is completely different regards genre/style/look.
• I couldn't find the trademark registered on TESS or it’s UK equivalent (I’m British).
• The series doesn't appear to be well-known. The last book in the series was published 2013.
• Each title has a sub-title, so if the word in question is XXXX, each book in the series is titled XXXX 1: YYYYY's Revenge (or similar)
Is searching TESS and the UK equivalent sufficient? Or should I do more? I don't want to register the trademark myself at this point. I've also searched the domain name registry, and that's fine.
Many thanks.
A:
Hi there. Thanks for submitting this question and being proactive with your intellectual property. There are a couple of important things to note. First, even unregistered trademarks have what are called "common law" rights in the United States. These rights are acquired as soon as the mark is used in commerce. Thus, it is possible to commit trademark infringement against a trademark that is not federally registered.
Secondly, although searching TESS and the UK equivalent is a great start, the best way to do a trademark clearance search is with the help of a licensed and experienced attorney. TESS can be a very complicated system to use, and many people only complete direct hit searches. A trademark attorney can complete a more thorough TESS search as well as a common law search.
Lastly, the USPTO does not allow trademark registration for single books, only book series or books that are so popular they have achieved secondary meaning in the marketplace.
For the best advice regarding protecting your book and your IP, please contact a licensed attorney. Note that this answer does not provide legal advice or create a lawyer/client relationship.
Marcos Garciaacosta agrees with this answer
A:
I agree with the comments of my colleagues.
Very likely you have an overlap between copyright and trademark.
It is possible and happens a lot where books or movies share the same title, although they come from different sources and the contents are different.
Consult with an attorney to understand your risks.
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