After the flurry of speculation last week as to whether Snooki will be publishing a book or memoir, I wanted to do my part to clarify the trademark vs. copyright question, especially since my article was the first to mention the possibility that Snooki might be writing a book. I was only joking when I said in “Snooki with an I “maybe she wants to write a book.” You don’t trademark a book–you copyright it. (Actually, it automatically qualifies for copyright protection when you write it, although that was not always the case). It turns out that you can’t even trademark a name except under certain conditions. I talked to Jonathan Pink, a Los Angeles attorney who specializes in high-stakes trademarks, trade dress, copyright, patent and trade secret disputes. Mr. Pink told me: “Generally speaking, the PTO won’t grant a registration to a mark that is merely a given name unless the applicant can show secondary meaning.”
So someone needs to be selling a line of products with the name they intend to trademark to give the name secondary meaning. Let’s take my name as an example. There are actually 3 live trademarks for “Valerie.” One is a line of printed materials for children owned by the company behind Lisa Frank Online (Fun Stuff Girls Love). The owners of Valerie’s Confections hold a trademark for use in connection with gourmet chocolate. A third Valerie trademark is owned by Oneida for use with flatware (an apparently discontinued line). Same name but different products in different classes.
Regarding books, Mr. Pink said: “Trademarks can be used for a series of book titles, but not for a single book. Good example: Harry Potter. The name ‘Harry Potter’ now has a federal trademark registration, including the class which includes books. Had JKR stopped at the first book, she would not have been able to get a TM. … If you look at any book in the series now, you’ll see that it has the TM indicator by the name ‘Harry Potter,’ [but] the first book, which we purchased pretty early on, before the second had come out, does not have that indicator.
“As to sound alike marks, (e.g. the i instead of the y), the USPTO will not allow a mark merely because of a letter change. If the marks sound alike (and are in the same class, or there is a likelihood of expanding into the same or similar markets), the USPTO will not permit the registration. This makes sense when you think about the fact that the hallmark for trademark infringement is a likelihood of confusion.”
That does not bode well for Snooki if she is planning a series of books. There is an existing trademark in the class she applied for (IC 016) for The Adventures of Snooky, a series of children’s books, owned by the author, John Monaghan. Snooky is a cat and according to one reviewer: “Snooky is a good role model for children.” Even if Ms. Polizzi’s application in IC 106 is unsuccessful, she may still have a chance in IC 041 (good and services: entertainment, in the nature of a television personality). The Urban Dictionary is already selling a line of products with the name “Snooky” on it, but there’s no trademark symbol (™) on it.
For everybody else who is worrying about whether they will have take down their websites or products that specifically include the word “Snooki,” if Nicole Polizzi successfully registers the mark, the answer is: it depends. I told you this trademark stuff was confusing! On that issue, Jonathan Pink says: “First use in commerce trumps a subsequent application. Also, the first user (or, as we usually say, the ‘senior user’) will have common law trademark rights, allowing them to continue using the mark in the geographic region in which they had used it, plus any natural area of expansion. So the website user and the second example would have both a defense and probably the right to continue (although not to expand by much).”
That bodes well for www.snooki.org. The Here, Snooky, Snooky, which refers to the common snook, probably never had anything to worry about.
Jonathan Pink, Esq.