Playing it Safe with Trademarks
By Evan Braun
Let me open today’s post with an example from my own experience. About a year ago, I sat down to critique a novel. In the opening scene, the story’s main character is introduced in the midst of his usual coffee order at a coffee shop. He then leaves the coffee shop, gets into his car, and decides to stop at a restaurant for breakfast. Afterward, he takes out his phone to call his mother; he wants to know if she needs him to get her anything when he goes to the store later that afternoon.
All of those details seem perfectly innocuous, until you see that the coffee shop was Starbucks, the car was a Ford Focus, the restaurant was Humpty’s Family Restaurant (even the breakfast order was taken right off the menu), the phone was an iPhone, and the store was Walmart. In other words, they were all trademarks.
Authors are often tempted to use a lot of brand names in their fiction, and that’s because brand names are a part of everyday life. It’s just about impossible to live in Canada or the United States without encountering dozens—perhaps hundreds—of trademarks per day. So if you’re thinking of writing a novel that is as authentic to your characters’ experience as possible, it makes sense that you would want to make mention of their trips to Starbucks and Walmart. That’s part of the reality of living in such a highly commercial society.
But we also live in a highly litigious society, which is why authors need to be careful.
When it comes to using trademarks in fiction, there are three legal principles that trademark owners are particularly concerned with:
The first two are unlikely to trouble your average novelist. Infringement is when a competitor uses the same or similar name as another company to sell a similar product. So, for example, if McDonald’s were to come out with a new hamburger called the “McWhopper,” Burger King would rightly be upset that their competitor is attempting to cash in on their trademarked Whopper sandwich. That’s infringement. Since novelists aren’t in the business of selling products aside from books, infringement typically isn’t an issue. To go back to the example I started with, the author wrote about a character going to Starbucks, but he wasn’t trying to sell Starbucks coffee to the reader. So there’s no issue there.
The second item is only slightly more problematic. Where novels are concerned, dilution can occur when a trademarked product name becomes synonymous with the product itself. I’ll give you two good examples of dilution: Kleenex and Styrofoam. We use those terms all the time, but what we’re really talking about is tissue and extruded polystyrene foam. Admittedly, “extruded polystyrene foam” doesn’t roll of the tongue, but you might want to avoid using Styrofoam anyhow.
It’s the third one, defamation, that will get authors in hot water. Let’s say our character—we’ll call him Pete—goes into Walmart and makes a joke about how annoying he finds the greeters at the front of the store. Walmart likely wouldn’t be happy with Pete’s characterization of their trademark, and so it’s a good example of a reason you would want to use a made-up store in Walmart’s place. Or you could choose to leave the name of the store generic. It’s likely to be a background detail, so there’s probably no good reason to draw attention to it anyway.
It’s easy to run afoul of defamation, which is the main reason you won’t find a lot of trademarks used in books. There’s a good reason to keep the real world at a slight remove if there’s anything at all about the way you’ve used a trademark that the owner might find objectionable. Unless your writing makes Starbucks out to be as warm and welcoming and wonderful as its TV commercials, take it out. The reader won’t care whether it’s Starbucks or some random, unnamed coffee shop, and you won’t have anything to worry about.
Besides, good novels come with good conflict and biting and realistic accounts of the world. Since good conflict and biting and realistic accounts of the world are anathema for trademark owners, it’s smart policy to leave ‘em out and play it safe.
About this Contributor:
Evan Braun is a full-time author and editor. He has authored two novels, the first of which, The Book of Creation, was shortlisted in two categories at the 2012 Word Awards. He has also released a sequel, The City of Darkness (2013), with a third entry in the series due later this year. As a professional editor, Braun has seven years of experience working with Word Alive Press authors. He is also a regular contributor at The Fictorians, a popular writing blog.