Trademark Question

[carolmarlene]

Anyone here ever title their book after a trademarked business. In my case it would be a restaurant and I want to use the same title for my novel. Just for your info my novel has nothing to do with the restaurant business and is about twins and a custody.

And just in case someone notices that the first sentence here does not end with a question mark, well, that is because right now my computer is making the French É instead of a question mark. Seems the only way I know how to fix that is to restart the computer but there must be a faster way.

[Ted]

7. What constitutes trademark infringement?

If a party owns the rights to a particular trademark, that party can sue subsequent parties for trademark infringement. 15 U.S.C. �� 1114, 1125. The standard is "likelihood of confusion." To be more specific, the use of a trademark in connection with the sale of a good constitutes infringement if it is likely to cause consumer confusion as to the source of those goods or as to the sponsorship or approval of such goods. In deciding whether consumers are likely to be confused, the courts will typically look to a number of factors, including: (1) the strength of the mark; (2) the proximity of the goods; (3) the similarity of the marks; (4) evidence of actual confusion; (5) the similarity of marketing channels used; (6) the degree of caution exercised by the typical purchaser; (7) the defendant's intent. Polaroid Corp. v. Polarad Elect. Corp., 287 F.2d 492 (2d Cir.), cert. denied, 368 U.S. 820 (1961).

So, for example, the use of an identical mark on the same product would clearly constitute infringement. If I manufacture and sell computers using the mark "Apple," my use of that mark will likely cause confusion among consumers, since they may be misled into thinking that the computers are made by Apple Computer, Inc. Using a very similar mark on the same product may also give rise to a claim of infringement, if the marks are close enough in sound, appearance, or meaning so as to cause confusion. So, for example, "Applet" computers may be off-limits; perhaps also "Apricot." On the other end of the spectrum, using the same term on a completely unrelated product will not likely give rise to an infringement claim. Thus, Apple Computer and Apple Records can peacefully co-exist, since consumers are not likely to think that the computers are being made by the record company, or vice versa.

Between the two ends of the spectrum lie many close cases, in which the courts will apply the factors listed above. So, for example, where the marks are similar and the products are also similar, it will be difficult to determine whether consumer confusion is likely. In one case, the owners of the mark "Slickcraft" used the mark in connection with the sale of boats used for general family recreation. They brought an infringement action against a company that used the mark "Sleekcraft" in connection with the sale of high-speed performance boats. Because the two types of boats served substantially different markets, the court concluded that the products were related but not identical. However, after examining many of the factors listed above, the court concluded that the use of Sleekcraft was likely to cause confusion among consumers. AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979).

Full text of Overview of Trademark Law (US)

Hope this helps.

[anita]

This topic brought some examples to mind... Breakfast at Tiffany's by Truman Capote, Searching for Bobby Fisher, Bend It Like Beckham,How Walmart Is Destroying the World...None of these examples infringe.

[ahpellett]

While you may be able to win a case, you don't want to instigate a law suit. The latter can be done just to be a nuisance , even if the plaintiff knows they can not win (here in the USA, nuisance suits are used often. Other countries may have different laws which prevent such suits but if you sell your titles in the US - which you do through SW - then be careful).

In short, be careful with that title, for you could face legal fees if you are not.

PS Coincidentally, I am dealing with the same question for my next title - even considering all Ted points out - and I really hate to change it, but I am more likely than not to do so because I don't want there to be any legal question.