Protect ownership of your title

Published in Folio: The Magazine for Magazine Management, August 1, 1994

Protect ownership of your title: Four steps you can take to help assure that once you come up with the perfect title for your magazine, you can keep it.

Once you’ve chosen a title for your magazine and made sure that it doesn’t infringe on anyone else’s (see “What’s in a name,” February 1, 1994, page 86), you may think that you’ve done all you need do to assure permanent ownership of your magazine’s moniker. Not so. You need to protect that title as carefully as you would any other valuable asset. The question is, how?

Apply for a trademark registration. A trademark registration in the United States Patent and Trademark Office will give you a big edge in protecting your title. A registration (and even an application for a registration) will show up in any search of the Patent and Trademark Office records–which should deter others from using that title or a confusingly similar one.

A trademark registration also creates a presumption that you are the owner of the title. This means that if anyone sues you (or if you sue someone else) for trademark infringement, the other person will have the burden of proving that you don’t own the title–which is better than your having to prove that you do. Proving that you have the right to use a title, especially when that title is descriptive, can be very expensive.

A federal registration also entitles you to bring suit in federal court, as opposed to state court, which
most lawyers will tell you is a definite advantage. [1] It makes you eligible, under certain circumstances,
to recover treble damages and attorney’s fees, in addition to being eligible to recover damages, profits
and costs.

You can apply for a federal registration even before you start to publish your magazine by filing an “intent to use” application in the Patent and Trademark Office. You cannot actually get a certificate of registration until you show the Patent and Trademark Office that you have, in fact, used the mark. But once you do that, the date on which you filed your application will be considered the date that you actually first used the title–which will give you priority over anyone who started to use it after that date.

It is advisable to have a trademark lawyer prepare the application and follow it through the Patent and Trademark Office. The application examiners often raise technical objections. Usually, these objections can be overcome by someone experienced in these matters, but they can also result in the abandonment of your application if they are not handled properly.

Use your title continuously. If you stop using your title with the intent not to resume using it, you will be said to have abandoned the title. This means that you will not be able to stop anyone else from using it, and that if you want to start using it again, you won’t be able to rely on your earlier use: you’ll have to start building up goodwill and trademark rights from scratch.

Intent not to resume use of a trademark is inferred from the circumstances. If you have not only stopped publishing, but also fired your staff, moved out of your offices, assigned all rights in your magazine to someone else, and gone into the restaurant business, that indicates that you have no intention to resume use of your title. If you have stopped publishing temporarily because of cashflow problems, a union strike or some other involuntary situation, that will not be said to be abandonment–as long as you start publishing again once the crisis has passed.

Courts are reluctant to find abandonment unless it’s very clear, and a party claiming that you have abandoned your title has a heavy burden of proving it. Under federal trademark law, however, non-use of a trademark for a period of two years creates a “presumption” that you have abandoned your mark. At that point, the burden shifts to you to prove that you have not abandoned the title. Continuous use can prevent this situation.

Continued use of your title is also necessary to maintain your federal registration. Between five and six years after the registration issues, you will have to show the Patent and Trademark Office that you are still using the mark. If at this point you can show that you have been using the title continuously for five years, your registration will become “incontestable,” which makes it even harder for anyone to challenge your rights in the title. You will have to make a similar presentation to the Patent and Trademark Office at the end of 10 years, when your registration will be up for renewal.

Don’t change the key elements of the title. If you alter the dominant features of your title so as to create a different commercial impression, you can lose your claim of priority to use of the original title. Dropping or adding a word, so that the title literally means something different, can have this result. For example, when the publisher of a former fitness magazine called Shape Up tried to re-enter the market after several years with a magazine called Shape, the Trademark Office held that those two titles were so different in meaning that the publisher couldn’t rely on its original use of Shape Up to claim priority over a newsletter called “SHAPE Write-Up” that had been published in the interim.

Police your title. You can also be said to have abandoned your title if you do not take action against someone who uses your title or a similar title in a way that creates a likelihood of confusion.

Besides just keeping your ear to the ground (or your eye to e-mail), you should have your trademark attorney monitor the Official Gazette of the Patent and Trademark Office. Published each week, the Gazette shows all pending applications for federal registrations. If someone applies to register a title or a mark likely to cause confusion with your title, you can oppose the applications. If the applicant is already using the mark, you may wish to sue the applicant for infringement, or at least sound out the applicant by having your attorney write a “cease and desist” letter–which sometimes is enough to solve the problem.

You can also be found to have abandoned your title if you license it to someone else without controlling how the other person uses it, or, in trademark terms, without controlling the quality of the goods or services sold under it. This would include licensing someone to do t-shirts with your title and failing to review samples, or licensing a company to put your magazines online and failing to supervise substantial changes in content or presentation. You should always have a formal license that sets out procedures for you to review proposed uses, but it’s even more important actually to review such uses whether or not you have a license.

Following these steps costs money, but it’s a sound investment in your magazine. The cost of getting a registration and policing your mark are far less than the costs of having to throw out a title and start building up reader recognition all over again.

© Jessica R. Friedman
[1] (Added in 2004) You can also sue under the federal Lanham Act for infringement of an unregistered trademark.