Branding,  Challenge

A Five Year Problem… Branding Part 14

Careful on Trademarks…

I know this is going to go way, way over most heads here, but I’m having fun so what the hey…

I have always warned about registering trademarks unless you have one of a thousand good legal reasons to do it and are willing to pay a lawyer (you must have one who know what they are doing).  My warning is always on the back end, all the filing dates and such you cannot miss with a registered trademark.

(Just as with copyright, registering trademark is optional. You don’t need registration to own and control copyright or trademark.)

Copyright is the most overlooked area of IP by writers. Trademark is just flat misunderstood and most writers don’t think it applies to them. (Half the writers I deal with don’t think copyright matters to them either… can’t help them…)

Yesterday, I was talking about first-in, the starting time of marks. Bryant Street, for example is a decent mark and has been making me money consistently from 1982. So all good there.

But just like with registered trademarks, there are a few basic rules with marks that just exist (not registered) like Bryant Street does. A good friend and very smart lawyer reminded me of the five year rule tonight.

Basically, in very simple terms, you can lose your place in line if the mark has gone five years without producing income. And you may lose your right to register it as well if you needed to do that for a legal action.

Remember a couple of basic factors about trademark. First into business wins, and the strength of the mark matters a lot.

But your “first in” date may be reset if you miss five years of income or use on a mark. Or worse.

So as my very smart friend suggested, do a tickler file. His suggestion is so spot on in my opinion, I am going to just quote it here.

The fix for indies is simple: On January first each year, look at the LAST

new issuance of anything for each brand. If that last issuance is more than

three calendar years in the past, establish a deadline prior to the _next_

January first to either add new branded material or reissue existing branded

material in a new edition (can even be the same format, so long as it’s

something distinctive and on-brand — a new author’s afterword, a new bonus

flash-fiction piece, whatever). This way, none of the brands ever fail the

five-year rule.

Really simple and clear. I don’t expect anyone but the top-level indie press owners who are reading this to set something like this up. Or understand trademark enough to begin to wonder why do this. Heck, I have been trying to get writers here to even understand when they have created a brand and why it is important.
But these kinds of blogs I do might be termed “awareness blogs.” I’m having fun and if I help a couple people by making them aware of higher levels of copyright and trademark and branding, then great.


  • Brad D. Sibbersen

    So if you have branded series titles in print, and one copy of one book sells, technically making you money on the brand, does that reset the five years from that sale? Or do you have to release new (or updated) material relevant to the brand every five years?

    • dwsmith

      From my reading of it, the brand has to be active in some fashion or another. Sales might not be enough to do it. So a simple rebrand, new story in the world connected to the brand, or a new edition would refresh clearly. Plus it would be good for the brand from a business sense anyway.

  • Jamie DeBree

    I’m going to create that tickler file *today*, while it’s top of the brain, and set yearly recurring reminders to deal with it in January (and some brands I need to shore up yesterday).

    These posts are very helpful! Thank you!

  • Kerridwen Mangala McNamara

    Love this!
    So good to know!

    That “tickler file” could be a reminder in a Google calendar or something… you could set it to remind you which brands to look at each year… and adjust it every time you issue something. (If you’re a digital calendar type. I’m not… yet…)

  • Kate Pavelle

    That’s brilliant, Dean! Thank you. A tickler file isn’t useful only to keep the brand alive, but also a reminder to add new content to old worlds which not may be selling well anymore. In fact, it would be a good time to evaluate whether to update covers, blurbs, etc.
    Q: are you adding products to your brand file?
    Q: for non-fiction (our cookie cookbooks,) it’s been 6 years since the publication of the 1st one. However, the website has seen regular additions of new, branded content over the years, which will result in the publication of several new cookbooks over the next 3 years. Would the online content count as brand activity? Readers are vibrant in their response to these. We are creating protected IP, but it’s not coming out on paper yet.

    • dwsmith

      Products would be a large part of a future brand in this new world. Yes. And new content, no matter how it is fixed, extends the brand. There are many major brands that are only online. Remember your copyright.

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