Writing and the Use of Trademark Words

The use of trademarks is a very litigious business for those who commit infractions. You better not title your strawberry drink Coca-Cola, or call your car design the Toyota Prius or Toyota Pumpernickel. Most of this seems obvious. The maker and manufacturer own the right to that brand and no one will ride on their fame and steal their sales. It can get as contentious as the famed Disney lawyers who have actually trotted into a little flea market and told a woman to cease and desist in selling clothes made with Disney trademarked designs. The fabric was bought legally; it was the fact that she was trying to sew the cloth into clothing and sell that, that Disney objected to. Lawyers for Marvel contacted Vancouver media at one point and told them to stop calling a particular cat burglar (who climbed the side of buildings ) Spider-Man. They didn’t want the comic book hero associated with the dark side.

These areas can become very contentious, and there are copy cats who will take a name and change one letter while keeping the font and style the same. Companies also trademark their brand colors but when it comes to the world of writing there are many different areas.  If I’m putting a brand name into my magazine or website, say as an ad that they paid for, then I have to use it properly, with either a registered® symbol or a trademark ™. These are different forms of branding. But what happens when we’re talking about fiction?

This came up in the writers’ group I belong to and it caused some upset as one author felt picked upon, although we were discussing the vagaries of the situation. Someone said her manuscripts had been rejected from a publisher because she mentioned name brands in her story, such as the character putting on his Armani suit and driving his Rolls Royce. In fact, a writer can using any brand name in their fiction and they do not have to put trademark or register marks into the text. As an editor I’ve sometimes had to pull these symbols out. The discussion continued that it would be okay to have a character drink, say, an Absolut vodka but to drink piss-warm Absolut would possibly be seen as defamatory.

The truth is, it would be an extremely rare case of any publisher ever being sued (or the writer) because a brand name was used in a negative light. It happens all the time. But this is very different for fiction than for advertising and marketing materials. Even nonfiction, as in a review, a critical piece or a journalistic article on a company or a product does not curtail the writer from writing negatively about that product and naming it. There have been science fiction novels that had various corporations taking over or running the future and these did not depict the shiny side of the corporation.

A publisher who asks a writer to remove every name brand from a piece of fiction could be doing it for several reasons, but should explain why they want it removed:

  • they think the usage actually detracts from the writing
  • they fear libel for the defamatory use of the name
  • they have a personal feud with a company
  • other?

The first reason is the only valid one, while the third is more a case of personal issues that should not interfere. And the second reason is really ridiculous. I commented and still maintain that a publisher who fears being sued is not knowledgeable in the ways of publishing, fiction and trademark issues. You don’t have to be an expert to know this and there are numerous examples out there. Not all publishers are educated on copyright and publishing, as was seen with the Food Source editor who thought everything on the internet was up for grabs and public domain. Not so.

If you opened a book store and called it Kodak, or a shoe store and named it Xerox, you would run into branding issues. But if you opened a bookstore called Blackberry Books, you wouldn’t and in fact there used to be a bookstore by that name. If you write about a drug smuggler who drives a Humvee and loves her Converse runners because they help her escape faster you’re not going to have a problem. If you write a book saying that Lulu Lemon yoga pants cause cancer, you better be able to prove it or you’ll be slammed with a defamation suit.

Product placement in a movie or TV show is a big thing worth big bucks. You, the writer, naming any brand in your story is not what your story is about, yet it could be a major part of the plot and it would still make no difference to those corporations. So write away and don’t worry. This blog has not been brought to you by Pepsi, Disney nor Exxon.

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13 Comments

Filed under Culture, entertainment, Publishing, Writing

13 responses to “Writing and the Use of Trademark Words

  1. Donald

    if I use a trademarked word like nephilim in my book (story, not title), can I be sued?

  2. Hi. Interesting post. What is the case with using brand names similar to an existing one e.g. Calvin Kine or such (but in a similar font style)? Not to sell clothing or anything that the true CK sell, but to sell an unrelated product? Thanks.

    • colleenanderson

      I’m only talking about writing. For usage of the same fonts, colors and names you should check with a copyright lawyer.

      • Hi Colleen, I came by this website by way of Good Reads and wanted to ask you about the submission as I have self-published a book of poetry in August 2011 though have not done much with it other than to give copies to close friends, professionals and family members. I have full copyright ownership and all rights reserved. What I would like to know relates to the technical side of cyber space as I am not adept at packaging items in attachments. Could I just send the item for consideration for the Anthology by email and in the body of the email with my name and email and address and phone number, followed by the title of the piece and then the self- published book title and other information regarding the publisher and the printer.

        I am new at this and so would appreciate a little help and direction.

        Ciao, glenna or multiplicity hall

      • colleenanderson

        If you are talking about the anthology I’m co-editing then google Tesseracts 17 guidelines. You must follow those, and you must be Canadian or living in Canada for the anthology. If you’re asking about something else, then I’m afraid I’m not sure what it is. If you’re talking about submitting in general to magazines or anthologies, then you still must read the individual guidelines as requirements differ between paper or email submissions, attachments or in the body of the email, and whether it’s through submittable or other online forum. Standard manuscript format can be found by googling William Shunn.

  3. When can I used a trademarked word?

  4. Jlyn

    May the characters in my fictional screenplay love other fictional but trademarked characters like Dorothy, Scarecrow, Tinman and Lion from the Wizard of Oz and may they dress up like them as well? If the screenplay was made into a film, would this ruin the possibilities of the film being distributed? And finally, may the word “Oz” be used in the title? FYI, the characters don’t act like the ones in the movie, they just like the movie and dress up like them on halloween. Thank you so much for you guidance!

    • colleenanderson

      I believe Wizard of Oz is now in the public domain so you’re safe. In fact I use Dorothy and Oz in my own story “Shoes” which is printed in my collection. You’re safe to use it, and a film would not get that far as the legal department would check all of this before filming. Alice in Wonderland is also in public domain. Hence why we’ve seen so many versions. With many characters in famous novels/films they are copyrighted but if you had a child dressed in a Superman costume you wouldn’t be infringing, but if you said that child was Superman you would be. In Tesseracts 17 we have a story that uses Hermione. We checked first with the publisher but since it is a case of a child imagining her, again it’s not a problem. And don’t forget the Oz movie came from the book.

  5. Timothy

    Hello! I have a question…. I want to write a book about proper skin care. At the end of the book I want to list brand names of skin care products that is a good fit for the techniques that will be explained in the book. I will state in the book that these companies are not affiliated with nor endorses my book. Is it okay to do this? Can I be sued for this?

    • colleenanderson

      You will notice that you’ve read lots of magazine articles or books that do the same thing. You’re not being defamatory so there is no problem. However I’m not a legal counsel so if you’re truly worried check the laws. But like I said, I’ve read numerous articles where products are mentioned.

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