Book Authors Beware: Your Book Cover Could Soon Get You Sued

kay-leclerc (63)in #writing • 6 years ago

Trademark trolling has come to the book world in a major way that can put your book cover design and your bank account at risk.

What is Trademark Trolling?

The USPTO - US Patent and Trademark Office - grants trademarks to individuals and companies for logos, slogans and even individual words that are associated with that company’s brand. If you want a particular word, phrase or logo image to be associated with a brand that hasn’t yet been fully developed, that is also allowed by the PTO.

Since the advent of the net, some companies, attorneys and individuals have attempted to use both the trademark and patent systems not to protect their own work, but to be able to demand “licensing fees” from companies big and small.

There are even some organizations set up specifically to file applications for these often silly marks and patents and then pursue the license agreements and court filings.

Many major corporations often enter into the licensing agreements rather than spend the time and money required to fight the patent or trademark. It can be very difficult to get the USPTO to rescind a trademark or patent once granted.

What are some examples of patent or trademark trolling?

Some of the most despicable patent trolling cases cover things such as password entry to a protected website area, using right click to download an image, the computer language HTML, the delivery of streaming video. Cloudflare was recently hit with a patent infringement suit by a patent troll for inserting error messages to its users when there was a problem with their communications.

In trademark history one of the most infamous cases involved King Syndicate, the company behind the wildly popular Candy Crush games. They attempted to register the word “candy” and later attempted to register the word “saga”.

Ultimately they were only able to secure the trademark for some parts of the world and the outcry during the 30 day review period helped sink their chances in the US.

More recently, the Donald Trump 2020 election campaign is attempting to secure the phrase Keep America Great, which was used for a Tshirt design by another entity and is also associated with one of the Purge movies. While that application was turned down, it is believed to be in appeal.

The conclusion from some of the many cases that come before the patent and trademark office is twofold. Yes, common words and phrases can be trademarked. And there is little logic or common sense at work in the USPTO.

What is the threat to authors?

A recent filing in the USPTO seeks to trademark (not a patent) a common book cover layout.

The filing entity is a well known PTO troll - MSE Media. They are not authors, but are an IP (intellectual property) attorney registered to their home address in Texas. As an aside, many of the most egregious PTO trolls work out of Texas. They appear to be going after the book market as one of their filings earlier this year was for the phrase “Dragon Slayer”.

While this application has yet to be assigned to a PTO reviewer, don’t scoff at the possibility for this application to be approved. In my dealings with the PTO which go back decades, I have found that as long as your paperwork is in order, most applications are simply rubber stamped. Indeed, I can show you several thousand cases that would soon convince you everyone in the USPTO is an escapee from Wonderland. I have found that common sense is anything but common at the USPTO and it's just gotten worse since the advent of the internet.

I seriously doubt that any of the people staffing that department understands anything about tech, and probably thinks their email comes from giraffes who can fly through cyberspace. And they would cheerfully award a patent to anyone who filed the paperwork correctly for said giraffe. While granting a trademark for the word "giraffe".

So make no mistake - this trademark could be approved, for a book cover layout that is probably used by 99% of all authors and publishers. While I’m certain the target of the “licensing fee” robbery will be large publishing houses, self published authors could find their book covers being rejected in most POD channels as the printers attempt to protect themselves.

Can anything be done?

YES!!!

There is a 30 day window on all trademark applications that allows the public to comment and file a Letter of Protest. Here are the rules and tips for filing the protest letter

This threat is real. I don’t want to see the author community inn the same space as game app devs who can no longer safely use the word “ville” in any of their titles. It is very difficult, time consuming and expensive to fight a trademark once it has been granted. Our time to fight this is now, during the application process itself, not later after we have a C&D letter attached to a licensing agreement hit our desks.

Please read the rules and tips for the Letter of Protest and file that letter. The USPTO does take those protest letters into account in their review process. And thank you for helping keep our little corner of the world a better place.