Lynchburg, VA asked in Trademark and Intellectual Property for Virginia

Q: Can I use a title for my book that consists of a phrase that is trademarked?

For example, if the phrase man to man is trademarked, can my book title be, "Man to Man: Conversations with the Guys.

2 Lawyer Answers
T. Augustus Claus
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Answered

A: Whether you can use "Man to Man" in your book title depends on a few things. If the trademark for that phrase or similar ones covers books, using it might be seen as infringement. If your book is in the same genre as the trademark, it's riskier. You could defend using it if your book criticizes or comments on the phrase, isn't for commercial gain, and uses only a little of the trademarked phrase. If people might get confused about whether your book is connected to the trademark, that's a problem. Strong trademarks, like famous brands, have more protection.

James L. Arrasmith
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Answered

A: Using a trademarked phrase like "Man to Man" in your book title "Man to Man: Conversations with the Guys" can be a complex issue in trademark law. Trademarks are generally specific to particular types of goods or services, and the key issue is often whether your use of the phrase in a book title is likely to cause confusion among consumers.

If the trademarked phrase "Man to Man" is used in a completely different industry, there may be less risk of confusion. For example, if the trademark is for clothing or tools, using it in a book title might not be considered infringing. However, if the trademark is in a related field, like publications or educational services, this could increase the risk of perceived confusion.

Adding the subtitle "Conversations with the Guys" does provide some differentiation, but the main focus is on the use of the trademarked part, "Man to Man". The overall context of your use, including how well-known the trademark is and how similar your book's subject matter is to the products or services the trademark covers, will play a significant role in determining whether there is a likelihood of confusion.

It's a good practice to conduct thorough research, perhaps starting with a trademark search, to understand the scope of the existing trademark. Given the potential for legal complexities, it would be wise to seek legal advice tailored to your specific situation. A legal professional can provide insights and guidance on how to proceed while minimizing the risk of infringing on the trademark.

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