About Common Law Trademarks
Should you Trademark Your Book Title or Business Name?
Book titles and business names can be protected ONLY with a trademark, so the question is whether your book title is likely to be stolen and applied to another book that would compete with yours, or to a business that others might think you owned.
In this article. Barbara shares her experience with having the titles of her two best-selling books “lifted” by others, and how a trademark attorney established common law trademark protection for one of them.
NOTE: As explained below, the phrase, Homemade MoneyTM, gained common-law trademark status through the years and may not legally be used by others.
I THOUGHT I WAS VERY CLEVER when I coined the name of my first book Creative Cash (with a good subtitle) in 1979, and later published Homemade Money in 1984, another originally coined phrase. But I had no idea just how unique these words would turn out to be and how many others would profit from them.
This was long before I got active on the internet, and when I did, I learned that my originally coined words, “creative cash” had been taken by others as the name of their businesses, and there was nothing I could do then to stop it. But I was able to do something about the theft of “homemade money.”
I was very upset when someone stole my Homemade Money book title after it had been in print for a few years and applied it to a sleazy MLM magazine. The magazine’s publisher hadn’t yet applied for a trademark, so my attorney, Mary Helen Sears, was able to stop him from using this name. Because it had been so closely identified with my name since 1984, she was able to prove that my personal reputation would have been damaged if someone had seen this name on their magazine and thought I had something to do with it. Ms. Sears sent a powerfully-worded series of letters that convinced the publisher he had to stop using my book’s title—or else. As Ms. Sears explained:
“Because it is strongly associated with Barbara Brabec in the minds of persons engaged in, or interested in engaging in, home-based business enterprises, the term ‘Homemade Money’ has acquired a secondary meaning, not only as the identification of a book that has the reputation of being the handbook and primer in how to start, maintain and conduct a home-based business, but as the trademark and service mark for educational materials relating to home-based business, and for educational and informational activity of all types in regard to such business.”
Thus, anyone using this phrase for their own profit would be in direct violation of trademark law 15 U.S.C. 1125(a), and I can take appropriate legal action against them.
I published this warning on the book page of my website and never had a problem after that as far as books or magazines were concerned. But when I did a search for both phrases in 2021, I found more than 200,000 hits for both “creative cash” and “homemade money” on them. In browsing the first several pages for “creative cash,” I found several books with that title and/or subtitles relating to real estate, home business, brewing beer, custom printing, earning “creative cash” on purchases, auto dealer supplies, gift ideas, on an on. Even Georgia State Senator Nick Jones is using these words in connection with his home business as an adviser to Apple.
“Homemade Money” is being used in titles of articles, for money-making podcasts, and a variety of homemade products and services people are offering for sale. But none are related to books or businesses of a kind that might make people think I’m associated with them. I find it ironic that the dot-com domains for both of these book titles are for sale now when both books are old and out of print and I’m long past caring about pursuing anyone legally—except, perhaps, an author who might think about publishing a new Homemade Money book someday.
CLEARLY I STARTED SOMETHING on the web when I dreamed up the titles of my first two important trade books. I’m just glad I profited so much from these books in the many years they were in print and helped so many people start, manage, market, and diversify a business based at home.
I hope my trademark experience will serve as a warning to other authors and business owners, too. If you really care about protecting the great title you’re going to give your book or the name of a new business, consider protecting that name with a trademark. And then understand that to keep your trademark protection you’ll need to be vigilant about making sure no one else is using your trademarked name.
Perhaps the best example of one company that went overboard on protecting their trademark on a single common word is Entrepreneur Media. Read the chilling details in this article: “Entrepreneur Magazine has a trademark on the word ‘entrepreneur,’ and is suing some businesses that use it.” (For more info, do a general search for “Entrepreneur lawsuits against entrepreneurs.”)
To do a search to see if a name you want to trademark is already trademarked, visit the U.S. Patent and Trademark Office website, which has a “Trademark Electronic Search System (TESS).
I REMAIN GRATEFUL for the help I originally got from Mary Helen Sears. She has been in private law practice in Washington, D.C. since 1961. The M.H. Sears Law Firm, Chartered, is mainly devoted to patents, copyrights, trademarks and related matters.
This article was adapted from Barbara’s HOMEMADE MONEY book.
Buying a Domain Name for Your Business: A Trademark Pitfall to Avoid. Perspective, tips, and advice from Barbara on a topic of importance to every business owner and author.
An Overview of Common Law Trademark Rights
How to Establish a Common Law Trademark
Common Law Trademark Rights