The term, Book Trailer®, is a registered trademark…

Faydra Deon
By Faydra Deon October 19, 2012 11:48

The term, Book Trailer®, is a registered trademark…

This article was written back in October 2012, but it’s still very relevant.

Yesterday, I received the following in an email from Sheila Clover of Circle of Seven Productions:

The term “Book Trailer” is a US Registered Trademark, legally owned by me. This is something fairly easy to look up and confirm.

Since you are making money from the term we ask that you do the following- Put a credit on your site that reads- “Book Trailer” is a registered trademark to www.cosproductions.com used with permission.

or-

Accept all submitted COS book videos at no cost to us

or-

Not use the mark and change it to something else. 

We’re flexible and not out to cost you money or cause you stress, but we are legally obligated to protect the trademark in order to keep it.

Thank you!

I replied to her email immediately and let her know that I’d be removing the term, Book Trailer®, from the Index and Indie Authors TV, which I did within a matter of an hour.

To her credit, Ms. Clover wasn’t angry and nasty about the whole thing. She replied to my reply of her email and we did a little back-and-forth, and I found her to be very friendly and open-minded.

Anyway…

Once I got the term, Book Trailer®, off the Index and IATV by switching to terms like “trailer,” “video,” “trailer of the/your/my book,” and “book video,” I started doing a little research to write this article to let others know about this issue.

I found out some interesting things.

The wording of the trademark…

When Ms. Clover applied to register the trademark for Book Trailer® it seems she had the idea of making money by offering a service to other people.

In the “Goods and Services” field of the trademark application, it says:

promoting the goods of others by preparing and creating advertisements for books in the form of videos

That choice of words is interesting to me in that they specifically talk about “promoting the goods of others.”

Does this mean that if I create my own trailers for my own books that I don’t have to mention that Book Trailer® is a registered trademark?

I mean, in her original email to me, Ms. Clover did mention that she was contacting me because I was making money from the term Book Trailer®, which was actually an assumption on her part and not true.

I didn’t create any of the trailers for the books on IATV. I just created a forum for authors to have their book videos added. As of the date of this post, no one has paid me a dime for any trailer that is on IATV.

Moreover, I’m not “preparing and creating advertisements for books in the form of videos.” I’m simply embedding code provided by others who either created the videos themselves or had someone else, not the Index or IATV, prepare and create the advertisement for their book in the form of a video.

When I received the email, I didn’t have time to actually do any research, so I took Ms. Clover at her word. I just scoured my sites and removed her trademarked phrase in total.

At that moment, I was more concerned about not being an infringer than figuring out whether I was actually infringing. As a writer, copyright is important to me, so I was looking at Ms. Clover’s concern from my point of view as a writer and how I would feel if I came across my own non-credited content on someone else’s site.

What is true about the Book Trailer® trademark…

First, I found it easy to find the information about the trademark that Ms. Clover registered back in 2002. Here’s a link to what I found on TESS, the Trademark Electronic Search System.

This means that by law, if you use the term Book Trailer®, you must first have permission from the trademark holder to do so and then you must state conspicuously that Book Trailer® is a registered trademark of Sheila F. Clover.

What is not true about the Book Trailer® trademark…

Second, the trademark isn’t registered to Circle of Seven Productions, which means you don’t have to credit the company with owning the trademark.

The trademark is registered to an individual, Sheila F. Clover, who is the owner of Circle of Seven Productions, who registered the trademark for Book Trailer®.

This means that stating Book Trailer® is a registered trademark of COS Productions is false.

Moving on…

Another thing I did when I received Ms. Clover’s email is I actually went to her site and read through it. At the bottom you’ll find the following:

Book Trailer® and Book Teaser® are registered trademarks of Circle of Seven Productions.

I’ve already dealt with the issue that Circle of Seven Productions does not own the trademark for Book Trailer®, so I won’t go over that again.

I now bring your attention to the part about Book Teaser, since the site says Circle of Seven Productions owns the trademark for that term, also.

It does not.

Circle of Seven Productions is not the registered trademark owner of Book Teaser, but Sheila F. Clover was the owner up until 04 October 2012.

Another search of TESS for the term book teaser returned the result that the trademark is DEAD and was cancelled on 05 October 2012. Here’s the link to that information. However, if you go to the COS Productions website and scroll to the bottom of the page, there is still an assertion that book teaser is a registered trademark.

Why are the distinctions about who owns the mark important?

You may not actually care if it’s Sheila F. Clover or her company, Circle of Seven Productions, that owns the trademark for the term, but I do, especially since I was contacted about misusing the trademark.

In matters of correctness, let’s make sure we’re being totally correct.

I don’t argue the point that Sheila F. Clover registered the trademark Book Trailer® and should be credited as such if she gives me permission to use the term.

I’m just not obligated to attribute the trademark to Circle of Seven Productions.

I’m not the first person to broach this subject.

Patricia Awapara did a post entitled Did you know the phrase “Book Trailer” is a Registered Trademark? on 10 July 2012, and I found an interesting comment on her post from Improv Writer.

This is what the comment says:

Thanks for this info. I did a little research on my own and found some further information that might be helpful. First, I did a trademark search at the US Patent and Trademark website. The trademark “Book Trailer” is registered to Sheila F. Clover, as an individual, NOT as a company or subsidiary. Therefore, COS Productions would have to have her personal permission to use the mark (easy since she is the owner, but legally significant).

Second, the mark is what would be classified as “Generic” under trademark law and has no legal protection. If it could be proven that this mark was generally associated with Sheila F. Clover (not COS Productions), then it would be considered “Descriptive” and would be afforded SOME legal protection. This is most likely why Sheila is allowing free use of the trademark – she has no legal footing unless a vast majority of the public associates the term with her, personally (again – not with her company) http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm

So you were correct when you said it would be like creating the trademark “hot dog.” You can register that trademark with the USPTO, but you would have no legal means of enforcement.

A little about genericity…

What I found interesting about Improv Writer’s comment is that he asserts, based on his research, that even though Sheila F. Clover registered the trademark for the term Book Trailer®, the term is actually considered generic because the vast majority of the public does not associate the term with her personally. Since the trademark was registered to an individual, and not a company, then the association by the vast majority of the public has to be with the individual, not the company.

Until I received the email from her, I had no idea who Sheila F. Clover was, nor did I have a clue that a company called Circle of Seven Productions existed.

Since I’ve been operating in the book sphere since about 2009, and I’ve been dealing with hundreds if not thousands of authors and publishers, none  ever mentioning to me that Book Trailer® was a registered trademark by Sheila F. Clover, then it’s possible that the vast majority of at least the public I’ve come into contact with don’t associate the term Book Trailer® with Sheila F. Clover either.

ASIDE: Click here to read a cool article by Mark Bailey on The Dogg Blogg about genericized trademark.

On the Harvard Law page about trademark law, they say the following:

Trademark rights can also be lost through genericity. Sometimes, trademarks that are originally distinctive can become generic over time, thereby losing its trademark protection Kellogg Co. v. National Biscuit Co., 305 U.S. 111 (1938). A word will be considered generic when, in the minds of a substantial majority of the public, the word denotes a broad genus or type of product and not a specific source or manufacturer. So, for example, the term “thermos” has become a generic term and is no longer entitled to trademark protection. Although it once denoted a specific manufacturer, the term now stands for the general type of product. Similarly, both “aspirin” and “cellophane” have been held to be generic. Bayer Co. v. United Drug Co., 272 F.505 (S.D.N.Y. 1921). In deciding whether a term is generic, courts will often look to dictionary definitions, the use of the term in newspapers and magazines, and any evidence of attempts by the trademark owner to police its mark.

So basically, if someone or a group of someones decided to get together and challenge Ms. Clover’s right to trademark the term Book Trailer®, it’s possible that the fact that Ms. Clover has to “police” her mark—send out emails letting people know she owns the trademark—would work to her disadvantage, because it’s proof that many people don’t associate her with the term.

I’d say this is why Improv Writer states that Ms. Clover “has no legal footing” to enforce the practice that we get her permission to use and then credit her for the use of Book Trailer®.

The bottom line…

As of 27 July 2004, and according the the United States Patent and Trademark Office, Sheila F. Clover owns the trademark for the term Book Trailer®.

If you want to use it, you should get the permission of Sheila F. Clover to do so.

When you use it, you should conspicuously state Book Trailer® is a registered trademark of Sheila F. Clover.

If you take issue with Ms. Clover’s right to own the trademark for Book Trailer®, then make certain you go through the proper channels to deal with it. Don’t just assume you have the right to ignore the trademark, because Improv Writer and the the Harvard Law website says it’s most likely a generic term.

Ms. Clover right now owns the trademark, so respect that and act accordingly.

Faydra Deon
By Faydra Deon October 19, 2012 11:48
Write a comment

18 Comments

  1. TOM UFERT October 19, 13:20

    Thank you Faydra…most informative and enlightening article! I personal have always referred to my soon to be released medium as a “video book trailer”. I’m gathering from your indepth and thoroughly researched discussion, that I’m ok.

    Reply to this comment
    • Faydra Deon October 19, 13:29

      You’re welcome, Tom.

      Since you’re saying “video book trailer,” you still have to include the registered trademark symbol if Sheila Clover gives you permission to use Book Trailer®, since you have the words “book” and “trailer” side-by-side.

      On the Independent Author Network, they use the term “book video trailer,” and that means they don’t have to credit anyone or ask anyone for permission.

      I appreciate you reading the post. 😀

      Reply to this comment
  2. Karen October 19, 17:20

    Thanks Faydra!
    I’d like to share. Is that possible?
    You seem to have some legal training as do I.
    Great job! May be a booklet in the making!
    Karen

    Reply to this comment
    • Faydra Deon October 19, 17:29

      You’re welcome, Karen.

      Please feel free to share the article with the attribution: “first published on the Independent Author Index and written by Faydra D. Fields.”

      I actually have no legal training. I just did the research on the issue and found the information on the web.

      Reply to this comment
  3. Kerry Dwyer October 21, 04:57

    Thank you for this very useful information.
    It is quite complex. I am not sure I understand what the bottom line is. On my own blog I say ‘see my book trailer’ and then give a link to youtube. So I am sort of using it to make money as I hope people will then buy my book. Does this men I have to state that it is a registered trade mark?
    It seems crazy that any part of the language can be registered as a trademark. You could have phrases all over the place that are registered and not know about it.
    Kerry

    Reply to this comment
    • Faydra Deon October 22, 09:15

      Hey, Kerry. It actually doesn’t make a difference whether you’re trying to make money or not. That’s really a moot point that Ms. Clover brought up when contacting me. If you use the words “book” and “trailer” one after the other, you must have permission from Sheila F. Clover to do so. I’ve copied and pasted what is at the end of my post.

      The bottom line…

      As of 27 July 2004, and according the the United States Patent and Trademark Office, Sheila F. Clover owns the trademark for the term Book Trailer®.

      If you want to use it, you should get the permission of Sheila F. Clover to do so.

      When you use it, you should conspicuously state Book Trailer® is a registered trademark of Sheila F. Clover.

      If you take issue with Ms. Clover’s right to own the trademark for Book Trailer®, then make certain you go through the proper channels to deal with it. Don’t just assume you have the right to ignore the trademark, because Improv Writer and the the Harvard Law website says it’s most likely a generic term.

      Ms. Clover right now owns the trademark, so respect that and act accordingly.

      Reply to this comment
  4. Vanessa Finaughty November 27, 01:14

    I have a question: what are the proper channels to contest this? As far as I see it, it’s a generic term and that will never change, and therefore it’s surely not legally enforcable? I’d like to contact the correct channels and find out, if anyone knows who/where that is?

    Reply to this comment
    • Faydra Deon November 27, 01:59

      I’m not sure what the process is, but I think you could start with the Patent & Trademark Office. I just decided to go with other terms, like book video trailer, book video, trailer of the book, etc., because I didn’t want to ask anyone permission to use a phrase that I didn’t think they really should have trademarked.

      Reply to this comment
      • Vanessa Finaughty November 27, 02:20

        Thank you for that. I just sent them an email now. They say email replies may take some time, but I’ll let you know what they say in their reply. Hold thumbs that they agree it’s generic and not enforcable. I also pointed out to them that millions of authors and publishers use this term with no clue that it’s trademarked, so let’s see…

        If it’s a case of needing to lodge a formal objection, I’m willing to do that.

        Reply to this comment
  5. Richard Freeland January 26, 09:46

    Hi, Faydra

    Love your site and thanks for the info in this article. I haven’t used a book trailer yet, but if I mention “book trailer” on my site in an article, do I need to attribute it to her? Also, I thought you mentioned in your post that the trademark was dead? Does that mean it’s no longer registered and in use? If so, then folks should be able to use it without any kind of attribution or consequence.

    Reply to this comment
    • Faydra Deon January 26, 15:35

      Thanks for your comment.

      I’ve you’ve used the term in your article, you first have to get permission from the trademark holder to do so. If you get permission, then you have to include an attribution. It may be easier to just use a similar term, like “book video trailer” or “book video” or even “video trailer of the book.”

      The trademark that’s dead is the one for book teaser.

      Reply to this comment
  6. ownersvoice June 20, 09:05

    Shiela Clover (COS Productions) is shooting herself in the foot where her clients are concerned. Publishers (her clients) need to take note that her effort to monopolize any book marketing trends is detrimental to their industry.

    Write a blog article about that!

    Reply to this comment
  7. ownersvoice June 20, 10:23

    Faydra, Miss Clover’s trademark would NOT hold up in court since it shirt-tails on the publicly accepted “movie trailer”. For example, “Stanley Steamer” is a legitmate trademark for a unique type of carpet cleaning service and NOT trademarked as “Carpet Cleaner”, the latter would infringe on free-enterprise and violate FTC regulations. Trademarks are not for Miss Clover’s purpose, which she intended to be all encompassing.

    Reply to this comment
View comments

Write a comment

Leave a Reply