Making a name for yourself: author trade marks

Just a quick glance at the relative size of a bestselling author’s name compared with the title on a book cover will tell you that our names can be valuable commodities. But can an author register a trade mark for themselves? What about their book title? And what protection do they actually provide?

When it comes to creative endeavours such as writing, the rules surrounding Intellectual Property (IP) rights aren’t always black and white. To provide a little more clarity, we threw some quick questions across to Barry Newman, principal at Armour IP – patent and trade mark attorneys. They assist their clients in dealings with IP Australia and other government and international bodies.

Q1: Can and should an author register a trade mark for their own name?

An author *can* register their own name as a trade mark. The other part of the question – should they – has a more complicated answer.

In legal terms, a trade mark is a sign which is used to distinguish the products of one trade from another. It’s how we know that we are shopping at David Jones rather than at Myer. An author’s name is definitely a trade mark – it’s how we know that we’re buying a Mem Fox book rather than a Richard Scarry book.

Registering a trade mark gives one the power to stop another party from using a “deceptively similar” name in connection with “goods of the same description”. So far, so good. The problem for an author is that there are a number of defences to an allegation of trade mark infringement – one of which is “using one’s own name in good faith”.

So registering your name does not prevent another author with the same name from using it on their books. It will prevent another author from using your name as a nom de plume – but there are already other laws in place which prevent a person from pretending to be you (or associated with you) in order to cash in on your reputation.

Where registering an author’s name as a trade mark becomes important is when you are seeking to use that name as a brand, wider than just as an author. Australian trade mark number 828604, for instance, protects the trade mark “J K ROWLING” for a wide range of products including games, clothing, stationery, computer software – and books. “BRYCE COURTENAY”, “ENID BLYTON”, and “MAY GIBBS” are all registered trade marks. On the other hand, there are no trade marks on the register for Mem Fox, Roald Dahl, Stephen King, AA Milne or indeed most authors.

Q2: Can an author register a trade mark for the name of a book?

In order to register a trade mark in connection with particular products (say, games or T-shirts) there needs to be a definite “intention to use” the trade mark for those things. As a matter of course, one wouldn’t register the title of a book until one was ready to start merchandising. As an example, “THE VERY HUNGRY CATERPILLAR” is a registered trade mark for all sorts of products – and that application was made in 2008. The book was published in 1969.

If there’s a film to be made with a lot of merchandising attached (exhibit A: Harry Potter), the registering of trade marks may well form part of the deal. But not necessarily – there are no registrations, for instance, for “Nim’s Island” or for “Bridge to Terabithia”.

Q3: If an author wants to find out more about trade marks, where could they look?

IP Australia is the government body in charge of trade mark registrations. See http://www.ipaustralia.gov.au/get-the-right-ip/trade-marks/ for general information. For particular information/advice, seek out a registered Trade Marks Attorney (try www.psb.gov.au).

Q4: Can you give authors a ballpark range on how much it costs to register a trade mark?

The total cost of a registered trade mark in Australia in a single class (through a qualified attorney) is likely to be in the order of $1500. Obviously there are many variables here, but at least that puts you in the ballpark.

Usage note: In Australia, the IP community writes “trade mark” as two separate words (with US using one) and never uses ’trade mark’ as a verb (rather, ‘register a trademark for’ something). However, Macquarie Dictionary is fine with ‘trademark’ and verb usage.

This is a guest post by Barry Newman of Armour IP – Patent & Trade Mark Attorneys. Barry wrote to us in response to a discussion about trade marks recently on our podcast.