Using Trademarks in Fiction

Q. I read that the Supreme Court recently upheld Google’s trademark, although people universally use “Google” instead of “to search.” Also, I’ve heard that it isn’t legal to use trademarks in a book, yet I see them being used all the time. Can you explain?

 A. Yes, Google is litigating to prevent its trademark from becoming an equivalent to the default word for searching the internet — a good example of how trademark law and “commercial speech” intersect with free speech.

Companies, big and small, spend considerable time and effort establishing these marks, and under U.S. law, can lose the right to the mark if they fail to “police” its use (send “cease and desist” letters and/or sue for infringement).

Don’t confuse trademarks with copyrights, which protect an original artistic or literary work itself, not the source of the work.  Book and movie titles are NOT protected by copyright (that is why you see many that are the same), but trademark CAN protect a book or movie title if the mark is owned by a publisher, author, or entertainment studio in connection with an ongoing series.  Think of “Star Wars” or “Harry Potter” – good luck using those names in your title.  They are trademarked.  Unlike series titles, however, the title of a single work generally is not protectable under U.S. trademark law because the work stands alone – although once a second book is published as part of a series, trademark is possible.

So – can your protagonist “Google” something rather than “use an online search engine?”  Can a character eat a Big Mac, or just eat a hamburger?  Can she go to Starbucks, or to a coffee shop?   Fiction certainly would be crippled if authors were unable to use the names of common, everyday items in their writing, and the first amendment is broad protection for this use

It is possible, however, to get into trouble using trademarks in fiction.  There are several legal theories in trademark that come in to play:  “product disparagement,” “trademark dilution” and “trademark tarnishment.”

The most significant for authors is with product disparagement — also called commercial disparagement, product defamation, trade libel or slander of goods — a false statement about a product that hurts its maker. Victims of product disparagement can sue the perpetrators under both state product disparagement laws and the federal Lanham Act, the law that protects trademarks.  For example, suppose in your novel a character discovers that Starbucks coffee is gradually poisoning the population of a town.  Certainly this might be objectionable to the Starbucks company (although even if you did this, the chance of it being noticed is small unless your book is a big commercial success).

“Dilution” and “tarnishment” also must be considered.  Dilution occurs when you use a trademark in a way that lessens its uniqueness; tarnishment, a form of dilution, occurs where someone uses a mark which causes a famous trademark to be linked with inferior quality products or seen in an unwholesome context. Xerox has been mounting a fight for decades to prevent all photocopying from being referred to as “Xeroxing,”  Kimberly-Clark been concerned with all facial tissues being generically referred to as “Kleenex.”  This, of course, is similar to the “Google/search engine” issue.

Therefore, unless you have a compelling reason to disparage or dilute a brand name, it’s always better to just create a generic or fictional name instead. Your readers will get it. In the above example, instead of Starbucks coffee, you might use “Melville’s Coffee.” And if you absolutely must use the brand name in a negative way, consult a publishing lawyer to determine the risk.