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Opinions Wanted: Does this Constitute Trademark Infringment?

by zacsmith
9 replies
Just wanted some opinions (not legal advice)...

I have a new freebie ebook titled "A Quick Happiness Makeover".

Another person has a registered trademark for "Make Me Happy The Happiness Makeover" with a first use in commerce in 2006. The owner seems to be a small publisher, as we are, working in a similar niche (happiness) but with a different market (depressed people) than us (people who are not depressed).

There are other variations of "happiness makeover" for print and video products.

We can come up with a new title that doesn't use the phrase "happiness makeover" at all, and since this is a free publication, I definitely don't want legal fees or hassles.

But I am reluctant to run away from this at the first sign of someone saying "boo," but that may just be my contrarian nature!

Thanks!

gary
#constitute #infringment #opinions #trademark #wanted
  • Profile picture of the author Dan C. Rinnert
    They sound similar and it seems your markets are very close, and that may be enough to be confusingly similar, which would make it potential trademark infringement.

    I am not sure I would chance that one. Too close and, thus, too risky for my liking.

    I would not move forward with the title without first consulting an attorney.
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  • Profile picture of the author SteveJohnson
    What are you expecting in the way of 'opinions'? My opinion is that you need to seek legal advice.
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  • Profile picture of the author Alexa Smith
    Banned
    Originally Posted by zacsmith View Post

    Just wanted some opinions (not legal advice)...
    Why?

    As a professional publisher, yourself, clearly you already know that you can't make this decision without spending 5 minutes on the phone with a trademark lawyer, so how will opinions from forum-members be relevant or helpful to you? :confused:

    But if you're asking us to guess the outcome, my guess is that after speaking with a lawyer - any lawyer - you'll "reluctantly" decide to come up with a new title that doesn't use the phrase "happiness makeover".
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  • Profile picture of the author weblink29
    I just spent a minute at thesaurus.com

    If you decide to change the name here are some ideas to spitball:

    awakening
    comeback
    renewal
    restoration
    rejuvenation
    revival
    recovery
    rehabilitation
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    Nothing to see here folks.....move along.

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    • Profile picture of the author zacsmith
      Thanks, all, for the responses. They pretty much confirm what I thought I'd have to do. The two are just too close for comfort. The mark owner is definitely working in areas (publishing books, etc.) that we are working in.

      Not worth the hassle, distraction or possible expense for what is essential "email address bait."

      We already have a couple of new names that don't come close to infringement, so the solution seems obvious: I'll be changing the title of the book.

      BTW: Yes, I have an attorney, but he doesn't specialize in IP but calls in a specialist, for which I would pay. And before I spend $250 for that five-minute consult (IP attorneys in Atlanta are NOT cheap and usually don't answer these types of questions for free -- I've asked -- so I thought I'd just throw this out and get a couple of armchair opinions from folks in this forum. There are a fair number of flamethrowers and instant experts, but there are many more Warriors who have actual experience in these matters. I trust my own judgement, but also seek those of other experienced folks as well, sort of as a "first-level" of research. This product is not worth paying for the 5-minnute consult as it is free, hasn't generated a single prospect address yet, and is secondary to the main product.

      gary
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  • Profile picture of the author Gene Pimentel
    I'm not sure how trademarks are treated in the case of a book title, but the title of a book is not copyrightable. Many people may use the same title for different books.
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    • Profile picture of the author Dan C. Rinnert
      Originally Posted by Gene Pimentel View Post

      I'm not sure how trademarks are treated in the case of a book title, but the title of a book is not copyrightable. Many people may use the same title for different books.
      Book titles cannot be copyrighted, but they can be trademarked.

      Typically, it is series of books that are protected by trademarked, such as the "...for Dummies" series. But, an individual title could be trademarked if certain criteria are met.
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  • Profile picture of the author zacsmith
    Dan, that's what my research showed as well, that book titles cannot be copyrighted. In fact, the mark owner referred to an author of a book title "The Happiness Makeover" who obviously has the copyright to her book, but could not prevent us from using the same title on ours (not that we'd want to).

    But the mark owner also has a couple of ebooks with "happiness makeover" in the title, which would seem to be protected under her trademark.

    Now, if this product were making any money for me, I'd probably pay for an attorney's opinion on whether a trademark registration that simply includes the phrase "happiness makeover" restricts my use of it. Obviously, I don't agree, but the ROI doesn't warrant the legal research to challenge that part of her trademark. Everything seems to come down to the money, and I have better uses for it!
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    Gary Smith, Partner, Wells-Smith Partners
    Your Employee Handbook Personnel Policies for Small Businesses
    Eliminate the barriers to a successful life: How to Create a Happier Life
    Stressful home life?: How to Create a Happier Home
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