Use of Trademark Names in Fiction

By Mark Nichol

A couple of years ago, a site visitor asked about the necessity of obtaining permission to refer to trademarked products by name in fiction. Here’s the specific query:

How is copyright dealt with in fiction writing? For example, if I sell a story where I wrote that a character jogged to Burger King in his new Reeboks, would there be copyright infringement? Do I need to get approval from the holders of the copyright to use their names in my stories? And, how would I go about doing that? How do I find out what is copyright protected and what isn’t?

And here, better late than never, is the response: Fortunately for the multitudes of authors who write fiction (and the innumerable publishing companies that print their books), writers are free, for the most part, to include trademarked names in their stories.

The passage in question is especially innocuous, because the references to Burger King and Reeboks are benign: Nobody in the novel dies from eating a Whopper, and no character is fatally run over in traffic because his running shoes are defective. But even if the author had implicated one of these brands in someone’s death, legal retribution would be unlikely; the sheer volume of media overwhelms any one corporation’s efforts to monitor for and suppress defamatory references to their products.

But risk is relative: If a writer with the stature of, say, J.K. Rowling had resorted to the plot device of a deadly hamburger or a dangerous pair of running shoes, her publisher would likely be sent a cease-and-desist letter. This terse request from the trademark owner would call on the publishing company to refrain from associating the company’s delicious and nutritious WhopperR brand beef-patty sandwiches or light but sturdy and comfortable ReeboksR brand athletic shoes with anyone’s death.

(Side note: The registered trademark symbol is never required; in commercial publications, it is often inserted to imbue one’s products with a protective aura or to refer to those of others, as a courtesy, to encourage reciprocity.)

To avoid such a consequence, an astute editor would likely request that Ms. Rowling excise such libelous references before submitting the final manuscript, thus avoiding the arrival of a letter referring to “possible recourse to further legal options to protect our valuable intellectual property rights.”

But your editor would likely do the same, perhaps suggesting that instead, you call the fast food franchise Hamburger Prince or the shoes Teezoks. Interestingly, assigning closely similar names, or describing companies or products that resemble real ones but are not named in their honor (or, often, dishonor), is fair play.

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42 Responses to “Use of Trademark Names in Fiction”

  • john a kalin

    Yesterday I discovered that the “pen name” I use for my books and short stories, is actually that of another writer (whether a pen name or her real name, I don’t know) – My questions is am I legal. Can their be two different writers using the same name? –

  • Mark Nichol

    Don:

    I don’t see how nephilim can be trademarked, because it’s been used quite often by various writers and game creators. See the “Popular Culture” section of the Wikipedia article “Nephilim.” Considering its widespread usage, I recommend you research other biblical/mythical nomenclature for an alternative name or make up your own name.

  • Don

    Nephilim is a trademarked name, the basic meaning is a human/angel hybrid. If I use this in my comic book can I be sued?

  • Shaun

    Thanks for all this which came up in response to an ‘unnamed search engine’ search on this precise question. I’ve recently started writing a novel and I would prefer to use real brand names for particular things as that situate the story in a particular time and place and it suddenly occurred to me to check on the potential legalities of doing so. Your answers here made it easy.

  • Mark Nichol

    Andy:

    I think you’re safe, so to speak, with Smith & Wesson, but you might want to avoid specifying a brand name for the deodorant, unless it’s really important — and even then you should perhaps disguise it.

  • Andy Pandy

    “Nobody in the novel dies from eating a Whopper, and no character is fatally run over in traffic because his running shoes are defective. But even if the author had implicated one of these brands in someone’s death, legal retribution would be unlikely; the sheer volume of media overwhelms any one corporation’s efforts to monitor for and suppress defamatory references to their products.”

    My novel specifically involves many robots heads being blown off by, for example, Smith & Wesson hand-guns – but then how could Smith & Wesson be offended by their products being used to kill? They are specifically designed to kill.

    Also a can of Lynx deordorant is used to blow up a car and melt a robots face off (in combination with a cigarette lighter) – is this ok??

  • Mark Nichol

    Wayne:

    I’m not a copyright expert, but I don’t think such a concept is copyrightable — and even if it were, I don’t know why you’d want to copyright it. Imitation is the sincerest form of flattery: Ursula K. LeGuin, for example, came up with the idea of the ansible, a virtually instantaneous interstellar communication device, and many other writers have adopted the name or the concept. As far as I know, she’s never expressed any indignation about the borrowing.

  • Wayne Driver Jr

    Hello!

    I’ve obtained a copyright on the book I’ve written (hoping to be published one day). I was wondering if I “have” to trademark the name of the supernatural substance everyone uses (in the book). I intend on marketing the book using this (made-up) name often. Does it fall under my copyright?

  • Mark Nichol

    Kate:

    These are types of cheese, not brand names, so you’re safe. You’d also be safe with brand names, however — if, for example, you named the mice Ford, Chevrolet, and Dodge.

  • Kate

    I have written and am moving towards publication of a book for teenagers in which the characters (mice) have cheese names, taken from many international cheeses, such as ‘Géramont’, ‘Zottarella’, ‘Petrella’ , ‘Stilton’, ‘Rambol’, ‘Redesdale’, ‘Monterey Jack’, to mention a few.

    Would I be in violation of international trademark laws in publishing this?

  • Jesse

    I love music. I want to start a blog or website that envolves my love for music but I’m afraid I will be sued when using trade marked band names, song titles, and album titles in my articles. Do you know anything about that?

  • Chuck Barnard

    “(Side note: The registered trademark symbol is never required; in commercial publications, it is often inserted to imbue one’s products with a protective aura or to refer to those of others, as a courtesy, to encourage reciprocity.)”

    The major reason companies do this for each other is to help avoid having their trademark “co-oped” and converted into an ordinary word.

    Xerox had this problem with their name for some time, as people refered to any photostatic copy as a “xerox.”

  • T. Johnson

    I’m getting a book published, but my character’s name is the same as another already existing character. They are nothing alike and the already existing character is from a comic book. Will I get sued or anything if I still keep my character’s name.

  • Steve

    Andy Knoedler…

    If I remember correctly Ray Davies changed coca to cherry because of BBC rules on (or rather against) product placement would have kept it off UK radio

  • Mark Nichol

    James:

    I’ve never seen the advertisements you refer to; the idea is quaintly amusing. Just pat the cute little ads on their heads and send them along their way — and then dab your eyes with kleenex as you mirthfully ponder the absurdity of the request. Unless you’re on the payroll of Kimberly-Clark Worldwide Inc. (no comma necessary before Inc., by the way) or are writing ad copy for a company that sells its products, you can write kleenex any d*** way you please.

  • James

    What about all of those ads in magazines for writers, asking us to refer to, say, the particular tissue as “Kleenex brand facial tissue”? That gets cumbersome, but you say that isn’t necessary?

  • John Felon

    In American Psycho, Ellis uses trademark names prolifically. He also shreds acts like Genesis and Huey Lewis and the News with his satire, yet he invented a daytime talk show named The Patty Winters Show instead of picking one of several real shows that existed at the time. Maybe Oprah would’ve given him trouble, or maybe a fictional talk show gave him more artistic freedom. Inventing new companies can be fun, and it eliminates the risk of getting facts wrong. Do what best serves your story. Your publisher will tell you if there are legal concerns.

  • Andrew Toynbee

    Very interesting and very useful article.

    I’ve been confused for years…having read a James Herbert story where his character frequently drove a Monza MX5 (did he originally pen it as a Mazda MX5?).

    My current effort at a novel is set in York (England) and my character frequents real shops and fast-food chains. Until today, I’ve been concerned about these outlets responding unfavourably to my using their names.

    Thanks for putting my mind at rest.

    I did get around the problem in part by having my indecisive character thinking about having a McSomething for lunch…or shopping at ‘Marks and Thingy’.

  • Andy Knoedler

    Once again we’re asked to bow low before King Commerce. Rather wimpish, I think.

    The rot set in, of course, years ago. I remember that the Kinks were coerced to change the lyrics of “Lola” from “You drink champagne and it tastes just like Coca-Cola” to “You drink champagne and it tastes just like cherry cola”.

    Interestingly this alteration was required only in the U.S. version of the song, not in U.K. or European releases. I’ve made sure that my iPod sports “Lola” with the original lyrics.

    “Product placement” in film or television is smiled on; casual mentions in novels or songs must be vetted first. The King has spoken.

  • Emil A. Georgiev

    Sue,

    do not take this as a legal advice, but as a guestimate -))).

    Very broadly speaking, in the US you might be liable under trade mark law for trade mark infringement and/or trade mark dilution.

    In order to succeed against you, however, the pills’ trade mark proprietor will have to demonstrate that you used the trade mark “in commerce” and your use was capable of confusing consumers as to the source of the pills or that your use diluted the trade mark. Not very likely in your case.

    Theoretically, you might also be liable for trade libel, provided that your statement was false and hence harmful to the product reputation of the pills.
    A true statement, albeit harmful, cannot be defamatory.

  • Mark Nichol

    Sue:

    “I’m just curious. One of my characters experiences the typical symptoms of taking an SSRI (happy pills) to combat post partum depression. She experiences detachment, a feeling of extreme laissez faire which she doesn’t like because her usual personality is fiery. This puts the brand in a negative light, although it is a true response for most users of SSRIs.

    “You’ll notice I’m avoiding using the brand name even in this comment. Should I keep skipping around in my WIP? I’m somewhat repetitive in calling them “happy pills” and “sunshine pills” and the generic name.”

    I’m no lawyer, but I don’t see any problem with having a character experience side effects from using a medication that is well documented to have caused such effects.

  • Nick Corcodilos

    I enjoy your daily newsletters, perhaps more than most because as a published writer who gets paid for his work, I am all the more aware of what I don’t know about writing! I always find useful tips in your columns.

    I’d like to offer a suggestion about the column on copyright/trademark. The reader who submitted the question seems to be confusing trademark with copyright. I think a discussion about the differences between them is worthwhile.

    Copyright protects a work (like an article, a book, an expression of an idea). Trademark protects a unique mark that identifies someone or something. For example, your column is copyrighted. My “Ask The Headhunter(R)” trade name is trademarked. I can’t trademark an article, and I can’t copyright my trade name. Thus, “Burger King” is not copyrighted; it is protected by a registered trademark. (Registration of copyright or trademark is another topic entirely.)

    You suggest that use of the registered trademark symbol is never required. While it may not be required when someone other than its owner uses it, the USPTO strongly advises that the owner always include the (R) or R-in-a-circle beside a registered trademark. Failure to use it may be construed as failure to claim the trademark, and could lead to legal difficulties in defending it. Interpretation of the law varies, but it seems to be the safe course to take.

    While it is prudent for the owner of a registered trademark to insist that the (R) be used with the mark, I don’t believe that someone using the trademark is required to use the (R).

  • RDM

    Actually, most corporation are elated when you refer to their products in either fiction or nonfiction. It’s free advertising for them.

    This reminded me of something that happened more than 20 years ago when I was the editor of my college newspaper. One day I received a letter from the legal department of Coca-Cola. In a story we published we referred to Coke but someone made a mistake and allowed it to be published as “coke.”

    The letter politely reminded us that Coke was a registered trademark and it should always be capitalized. There was no threat of a lawsuit. From that experience I learned that most corporations employee clipping services, which scan all forms of media to find references to their products.

  • Kelli

    Thank you for the information. I like the idea of taking brand names/trademarks and creating your own version (Burger Prince, Teezoks, great examples).

  • Sue O’Shields

    I’m just curious. One of my characters experiences the typical symptoms of taking an SSRI (happy pills) to combat post partum depression. She experiences detachment, a feeling of extreme laissez faire which she doesn’t like because her usual personality is fiery. This puts the brand in a negative light, although it is a true response for most users of SSRIs.

    You’ll notice I’m avoiding using the brand name even in this comment. Should I keep skipping around in my WIP? I’m somewhat repetitive in calling them “happy pills” and “sunshine pills” and the generic name.

  • thebluebird11

    Interesting post…and I just want to add my two cents. I have always noticed, for as far back as I ever read “Archie” comics (and that is a lot of years!), that they did that same thing, naming things with similar names. So for example, if Veronica were to go shopping, it might be at Lacy’s (instead of Macy’s). When I was younger I wondered why they did that, and I thought it was copyright-related, but I also thought that it made the characters and their setting (Riverdale) more “hometown,” so that even if a kid didn’t have a Macy’s in her town, she could relate to a Lacy’s. I always sort of chuckled at the sound-alike names that they invented.

  • jennifer blanchard

    Thank you for this article. I’ve always wondered this myself and no one I asked ever had a straight answer for me. Now I know that it’s OK to have my character wearing Manolo Blahniks, but prolly better to steer clear of her murdering her ex-boyfriend with the heel of one 🙂

  • Chris M

    Thanks for the article! A lot of writers also don’t realize that words like
    “Rollerblades”, “Kleenex”, “Jello” and “Band-aid” are also trademark words. Still people use them in everyday conversation whether they are referring to the brand or not.

    I try to invent my own product names or business names as well. It’s more fun that way!

  • Rebecca

    This is good to know. I often wondered if you needed permission to use the names of famous people — dead or alive.

  • Emil A. Georgiev

    Hi,

    a very informative read, especially for nonlegals.

    I’d also like to take up this opportunity to tell you that I recently added your blog to my Google Reader and that I enjoy reading it -). Keep up the good work!

    BR
    Emil

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