Dale Campbell is a European trademark and design attorney, and our go-to expert for all things intellectual property.
In this interview, she tells us how authors can use trademarks to safeguard their intellectual property.
Hi, Dale, thanks for joining us. Let’s kick this off with a simple question: what does a trademark attorney do?
I help fantastic businesses protect their brand names or logos by registering trademarks.
What exactly does that mean for authors?
[In the UK], trademarks are registered by the Intellectual Property Office and provide the owner with exclusive rights to the use of name or logo as registered.
What should authors trademark?
An author can apply for a trademark for their books, if they offer a series of books under the same title.
A trademark is important if the author is promoted and is recognised as the source of the books, so that when they see the name, readers will know what book they will be getting.
Trademarks are also relevant for the additional merchandise that comes from a book.
Can an author trademark their name?
Yes, anyone can trademark their name if it is distinctive and no one else has registered the trademark for the same or similar products or services. Examples of names that have been registered are Jamie Oliver and Nigella Lawson.
You may one day sell your trademark and this means you may sell your name for use on products or services that your name has been registered for.
An example of individuals who have sold their trademark are Liz Earle and Elizabeth Emanuel, and more recently, Jose Mourinho.
How can authors protect their rights to merchandise their intellectual property, such as characters and other creations from their books?
Characters will be automatically protected by copyright. So if the author is not the one who has produced the illustration, the illustrator owns the copyright. This can be assigned from the illustrator to the author. Usually this is dealt with in the terms and conditions but should be checked.
Characters can also be registered as trademarks. For example, the Disney characters are registered trademarks.
How long does it take to trademark an intellectual property?
A smooth application takes approximately 4 months from date of application in the UK to proceed to registration.
In the EU it takes approximately 6 -9 months, and in the USA approximately 9-12 months.
What countries do you work in?
I can help in any country worldwide.
I work in the UK and EU and work closely with trusted associates in other countries.
Can you give a real-life example of the consequences of not trademarking your intellectual property?
Victoria’s Wardrobe failed to register her trade mark. She then received a cease and desist letter.
Victoria said: “I had to change my business name as someone else had been clever enough to trademark it. Given the time, effort and energy I’d put into the brand, I thought it was devastating.”
She has now gone through the expense of rebranding, changing her website, domain name, Facebook, twitter, letter heads and business cards and registered the trademark FRANKY AND RUBY.
Victoria’s experience is a good reminder that it only takes someone else to register your brand as a trademark for you to potentially lose the name. Now she has protected the name with a trademark, she can grow her business with confidence knowing she owns the rights to the brand.
What’s the difference between a trademark and copyright?
A trademark is either a single word, a short phrase, logo or a combination of all of these which distinguishes your products or services from those of your competitors. Basically the branding.
A registration lasts for 10 years but can be renewed indefinitely.
A copyright gives you ownership over artistic creations such as paintings, photographs, poems or novels and even a logo.
A copyright is an automatic right which means that you have the right to reproduce the work, distribute copies and display it publicly. You own the copyright for your whole lifetime plus 70 years.
What are the best groups for an author to trademark in?
Trademarks fall into 45 different classes, covering different products or services. So you register your mark in the class or classes that are relevant.
The first 34 cover products and the last 10 cover services.
A trademark attorney will of course make sure that the correct classes are included.
Would an author really need to trademark in every class in every country?
No, you apply for a trademark for the products or services that you are offering. On average, most applications are in 1 – 3 classes.
We’ve talked a lot about authors and how they can trademark their IP. What about freelancers, what can they trademark?
Freelancers can trademark their company name or brand for their services, such as commissioned writing, editing, proof reading services.
There are many examples of small to medium sized businesses which operate under the name of one person that register that name as a trade mark.
Anything else you would like to add?
If your name or brand is valuable or has the potential to be valuable, then it is worthwhile thinking about protecting your name/brand through a trademark registration whether you are famous or not.
A registration certificate proves that you are the owner and gives you exclusive rights.
It is much more difficult and expensive to get your brand back if others start using it or someone else registers it as their trade mark.
It is not as expensive as you think and Trademark Tribe offers flat fee rates.
Dale Campbell is a trademark and design attorney, and founder of TrademarkTribe. They help fantastic businesses protect their brand names or logos by registering trademarks.