Insane Dames

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Using Trademarks and Celebrities in Your Stories

by Sue McKlveen
(content originally printed in the March 2006 Wisconsin Romance Writers of America The Write Touch
and submitted to the Gulf Coast Romance Writers website)

At the January meeting of the WisRWA Greater Green Bay Area, we discussed various literary devices that could make our writing stronger. One of the terms was "eponym," which refers to a famous person who is recognized for an attribute, and substituting the person's name for that attribute. I asked a question about using trademarked words like Dumpster, Coke, Kleenex, etc. in fiction. After the room erupted in discussion with no firm conclusion, I was given the task of finding out how trademarks could be used in stories.

Deciding that publishers would be the best source of information on the subject, I checked all listed on the RWA website. I wrote to most (some of the links were no longer valid) and, after explaining my intent, asked them the following questions:

"When writing a story, is writing a trademarked word into the story allowed by your publisher and if so, are there any restrictions?

For example, if I wanted to say that the heroine used a Kleenex, do I have to write 'tissue' instead, or can I use Kleenex? Does it have to be capitalized? Do I have to put an 'r' with a circle around it to show that it's a registered trademark? What if I write something nasty about the Kleenex, like it didn't do the job? What about using famous people's names, such as 'She was the Martha Stewart in the community'?"

I got a wealth of extremely useful replies from editors, customer service personnel, permissions coordinators, lawyers and even the CEO of one company. Every single one of the replies was very friendly and they couldn’t have been more helpful.

I’ve combined the results and listed them below. The majority of the emails I received quoted The Chicago Manual of Style, 15th ed. In section 8.162., it states:

"...Brand names that are registered trademarks should be capitalized if they must be used. A better choice is to substitute a generic term whenever available. Although the symbols (R) and TM often accompany trademark names on product packaging and in promotional material, there is no legal requirement to use these symbols, and they should be omitted wherever possible..."

I also received information from a website that addresses this topic as well: www.publaw.com/fairusetrade.html. It states:

"Generally, the use by an author of a trademark in a fictional work to describe or identify particular goods or services, such as "driving in my Ford", "eating a Hershey bar", "playing with my Beanie Baby" will not be considered an infringement as long as the use does not confuse the reader with respect to who actually owns the trademark."

The website article then goes on to state that the writer should include a disclaimer for each of the trademarks on the copyright page, and the writer and publisher should obtain insurance to cover any legal risks associated with using a trademarked name.

There was another reference to the AP Stylebook and Briefing on Media Law from the Associated Press if you’re still confused about what should be used. The website for getting the book or the online subscription is at www.apstylebook.com/.

My email contacts also mentioned that if you use names of celebrities (or certain trademarked items), it will date your piece, and the reader may not know whom you’re trying to describe. Also, if you use the name of anyone (or anything) in a bad light or say something that’s untrue, you’re setting yourself up for libel.

I received one email that encouraged use of the generic name along with the trademarked name. So, for example, instead of ‘She opened a jar of Jif’, the author should write, ‘She opened a jar of Jif peanut butter’ to make sure that the reader knows that Jif is a peanut butter. The trademarked name should be followed by what it is.

Another email from a lawyer in the United Kingdom stated that the name of the trademark should only be used to refer to the product of the trademark owner. It’s not to be used in a generic sense or be used to refer to the product of someone other than the trademark owner. He stated, "Trade mark owners monitor the use of their trade marks and will object to generic use because such use will make a registered trade mark vulnerable and will prevent the application of any new trade marks. Escalator is a classic example of a word that started out as a trade mark but became generic and is now used as a common term for a moving staircase."

To find out if your word is a trademarked term, see www.uspto.gov/, the US Patent and Trademark Office online site. One publisher has the writer go to that site and list all of the trademarked names used, on the first page of their finished manuscript.

In general, all of the emails I received encourage use of a generic term for as much of the story as possible so the writer doesn’t date the piece, and because the trademark holders have powerful lawyers. Be careful of this, and don’t depend on trademarked items or celebrity names. They may not be here tomorrow, when most of your readers will be reading your story. Your editor should be able to help you out, if and when you get the contract.

Oh, and as a side note to the one managing editor who corrected the grammar in my email, I say thank you. He changed 'She was the Martha Stewart in the community’ to 'She was the Martha Stewart of the community’. Thank you, kind sir, and yes, I’m embarrassed.

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