Trademark for Fiction Writers… Chapter Three
(Please read the introduction and first and second chapter to this book before reading this. You can find them at… Introduction and First Chapter and Second Chapter.)
And you need to buy the book Trademark: Legal Care for Your Business and Product Name by Stephen Fishman.
For a quick moment here in this third chapter, I want to relay ways to think about trademarks, and the level of value a mark has in use. (In Chapter Nine of Fishman’s Trademark book he goes into more depth on these in similar, but slightly different ways. Worth the read.)
Basically there are five ways to look at trademarks and evaluate their strength (in court).
Fanciful or Coined… Basically a made-up name.
Arbitrary… Real words used for a different purpose. (Think Apple.)
Suggestive… Think Holiday Inn or 7-Eleven Stores
Descriptive… Think The Weather Channel
Generic… Brand synonym with a product… Think Asprin.
These vary in strength from the top down, with coined or fanciful being the strongest to generic being too weak to worry about in my opinion.
So it is critical in trademarks to have a strong mark that avoids customer confusion. So clearly the best are fanciful or coined marks because they have no customer confusion. The name is either totally made up out of whole cloth and has no other meaning or is used for such a distinctive purpose from its original meaning.
Reebok for shoes is an example of a coined name. Bantam Books is fanciful. We bought Axolotl Press at Pulphouse, a fanciful name. Pulphouse itself would be suggestive in a form.
All of the first three I listed are usually strong trademarks and have a chance of not only getting through the system, but standing up in court if other factors such as first use are in your favor.
NOT SO STRONG MARKS…
Here is where many business owners get into trouble when naming their business. They use what Fishman calls “Ordinary” marks.
Fishman takes the ordinary marks and breaks them down even more and I like how he does it, so I am going to paraphrase his definitions here to help in understanding.
Descriptive… Basically describing the nature of the service.
Laudatory… Praising the business in some fashion… Fast Feet for shoes.
Geographic… Describing the geographic area of the service.
Personal Names… Jimmy’s Deli (Got to be extremely careful here.)
Business Name Initials… Don’s Publishing Company as DPC.
Fishman in the Trademark book in Chapter 9 goes on for many pages giving detailed and worthwhile breakdowns of the above. Get the book and read it, folks.
But for writers doing their own publishing company, let me add in a few things I have seen in this area of weak or worthless marks (business names).
First off, it is horrible for a ton of reasons, not the least of which is trademark, to use your own name as your publishing company name. If you are doing that, change it before you get too large. You will thank me in ten years.
Same with using a description or geographic name. Unless that name is completely made up.
With our first two writing corporations, Kris and I both used strong arbitrary names for our corporations that might have been mistaken for geographic, but actually were completely made up. We dissolved those corporations after twenty years and never had a conflict or customer confusion at any point along the way.
So right now, right here, at this point in reading this book, step back and give a hard look at your company name. And then do what almost no writer does… Think about what will happen if you become very successful.
Then get your publishing company name changed to a strong mark.
(And don’t ask me unless you are one of my mentor students if I think a mark is good or not. That is bordering on legal advice. I will help my mentor students with an opinion.)
AN EXAMPLE… (This chapter’s fun segment)
What Kris and I do a great deal (especially since the Licensing Expo) is pay attention to names and the strength of a name in relationship to a trademark issue.
Tonight, we decided to try something new for dinner. At the moment of that decision, we were driving past a corner of Chinatown here in Las Vegas. (Yes, Chinatown here is a very large area.)
Kris, on her phone, found a restaurant that would be fairly safe for her to eat that was “vegan friendly.” That way she can feel safe not tangling with any dairy.
So in Chinatown, we went looking for Cafe No Fur. And we found it, tucked back around in the back of a large complex that housed about seven or eight other restaurants.
Now let me stress, this is in Chinatown. Cafe No Fur.
Turns out it was like 1960s diner, food and all, including a strangely decorated bathroom. ALL VEGAN. They had nothing but vegan food. Nothing.
I had some amazing chicken BBQ sliders and Kris had chicken tenders and fries. And we followed that with Ronald’s Doughnuts and vanilla ice cream made from almond milk. Ronald’s Doughnuts is a doughnut shop in Chinatown that has vegan doughnuts.
And suddenly the name made more sense. Cafe No Fur.
Basically a descriptive business name for a completely vegan restaurant. But placed flat in the middle of Chinatown, the name got a lot stronger in trademark value.
The word “Cafe” in the title has no trademark value at all.
“No Fur” by itself is something that might be considered suggestive for a pet shop or a fishing store, but thinking of food and fur do not tend to go together.
But by combining Cafe No Fur into the business name, it makes the name memorable and fairly distinctive. You just don’t think normally of eating fur. At least I don’t.
And then by planting it solidly in Chinatown, it becomes very distinctive. And clearly avoids customer confusion. A vegan diner with hamburgers, sliders, and huge dishes of doughnuts and ice cream. Most imaginative descriptive name I have seen and more than likely would stand up just fine in trademark issues.
The food was stunning and we will go back. And not a chance in hell we will forget that name. And from the looks of the crowds, we are not alone.
And that is what a good name is all about.
Points re naming well-taken. Fortunately I’m one of those lucky few who has a knack for creating unique but suggestive business names.
As an aside, I’m confused. According to my strictly (almost militant) vegan daughter, “vegan” means no animals, animal products or animal by-products in food. But the Cafe No Fur had chicken?
LOL, haven’t been to a vegan place lately, huh, Harvey. They have chicken (fake chicken made from plants and tastes exactly like chicken) just like Burger King now has the Impossible Burger (a hamburger made of plants that tastes just like a hamburger.) Impossible Burger is a brand of the meat, not the name of the Burger King burger.
And speaking of bad trademark names, “Impossible Burger” is going to be a tough fight for them, if they even bother.
Two other things to think about. I’m going to shameless use one of my friends for this and Lisa uses her experience as something *not* to do when she talks to newbie acupuncturists. She talked to people in school about her great acupuncture clinic name. Everyone loved it. So she went out and named her clinic Points of Origin only to discover that to the general public this means nothing. No one remembers that it’s acupuncture even though it has a great deal of meaning to people in the field. Yet, other acupuncturists are not her main clients. Another issue she discovered was that when she abbreviates the name it becomes POO. Something else to think about. And yes, she laughs at herself for these things and she’s gone on to be a success but she points out, how much more foot traffic would she have gained if she had a clinic name that told people what she did.
Exactly. Better to have business than worry about the trademark silliness.