Many writers use trademarks as a shorthand for revealing a character’s status, tastes, and vanities. In fact, this is one of the most common questions writers ask me; will using trademarks get me into legal hot water?
Suppose your main character shoplifts Sephora cosmetics, slipping them surreptitiously into her Gucci handbag. Or maybe your young hero downs Red Bulls while showing off spins on his FatBoy BMX.
The good news is writers have a lot of leeway to incorporate trademarks into their work. The uses I describe above are permitted as long as writers following a few common sense guidelines.
What Are Trademarks?
A trademark is commonly known as a brand name. It identifies as particular product or service from a particular maker. A Big Mac is a trademark that identifies a hamburger from McDonald’s while a Whopper is a trademark for a burger from Burger King.
A trademark is different from a copyright. A copyright applies to an expressive work as soon as the work is put into tangible form; it’s automatic. In most cases, a copyrighted work may not be copied or used without permission from the creator.
In contrast, a trademark doesn’t exist until it is used in connection with the sale of a product or service in the market. And a trademark may be used by writers (and anyone else) as long as the use (i) doesn’t confuse buyers, or (ii) doesn’t tarnish or disparage the trademark.
The use of a trademark is considered infringing if it is used in a way that confuses buyers as to the maker of the product or provider of the service. When you walk down the streets of New York, you’ll see street vendors hawking “Rolex” watches and “Ralph Lauren” shirts. They want buyers to believe they are selling the Real McCoys are bargain prices. Their use is classic trademark infringement.
But using a trademark to add detail and nuance to a fictional story is not infringement. It’s hard to image a case where a writer’s use of a trademark to describe a character or a setting would lead a reasonable book buyer to believe that the book was published by the trademark owner.
Using a trademark in a title could be a problem if it creates confusion. I wouldn’t use a trademark in a title without consulting with someone familiar with trademark law.
Tarnishing the Trademark
A 1970s case about the pornographic movie Debbie Does Dallas is a colorful example. The movie, its posters, and trailers featured a buxom star wearing a uniform strikingly similar to that worn by the Dallas Cowboys Cheerleaders. Not surprisingly, the owners of the Dallas Cowboys Cheerleaders company were not pleased. They sued the movie producers, claiming the film and its publicity tarnished the reputation of their trademark uniform. They won.
To avoid potential claims, writers should not use trademarks in a disparaging manner. You are asking for trouble if your characters are poisoned by a Pepsi or run over by a self-driving Tesla. Yes, you may get away with disparaging statements if your work is clearly a parody or if the statements are true. Otherwise, if your use could be considered damaging to the image of the brand, then drop the trademark and make up a new one.
Writers should also avoid using a trademark as a generic word. Trademark owners fight hard to keep their brand names from “going generic” as happened to aspirin, cellophane, and ping-pong. Instead of saying your character googled the address, say she used Google to map the route.
Finally, don’t worry about marking a trademark with a TM or R in a circle. Owners of trademarks use those marks to remind the public not to use the trademarks as generic words. Writers do not need to use those symbols. They would simply clutter up the page.
Disclaimer: Helen Sedwick is an attorney licensed to practice in California only. This information is general in nature and should not be used as a substitute for the advice of an attorney authorized to practice in your jurisdiction.
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