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

What’s in a name?: Quite a lot, including lawsuits and loss of use, if you don’t choose your new magazine’s title carefully.

You’ve come up with a great idea for a magazine. You’ve done focus groups, written a business plan, lined up financing, identified advertisers and hired the key members of your staff. Only one task remains: picking a name. No problem, right?

Wrong. Choosing the wrong title can leave you helpless to stop a competitor from using the same title.
It can also cause you to end up on the losing side of a trademark infringement lawsuit. Should you deliberately copy someone’s title, you could end up not only having to change your title, but also having
to pay that magazine’s attorney’s fees.

What can you do to help assure your exclusive rights in a title? First, you need to know a little about trademark law, since that is the primary legal context for the protection of titles. A trademark is a work, phrase, slogan or graphic design that indicates that a product comes from a certain maker, and therefore is of a certain quality. Trademark A infringes Trademark B when (1) Trademark B was in use first, and (2) consumers who see Trademark A on items are likely to be confused into thinking that those items come from the same source as items with Trademark B.

In the case of magazine titles, the question is whether someone is likely to buy Magazine A thinking that she is getting Magazine B, or thinking that the two publications are somehow related. The answer depends on several factors. One, not surprisingly, is whether the two titles create the same “commercial impression”: do they look the same, or have the same meaning, or sound alike?

Also relevant is how similar the two publications are in terms of subject matter, target audience and frequency. Other criteria are the “strength” of the earlier title (how long it has been used and how much it has been promoted); whether the second magazine intended to copy the title of the first magazine; whether readers in the relevant market are sophisticated enough to be able to tell the difference between the two titles; and whether, to the extent that there is some difference in subject matter or target market, the first magazine intends to “bridge the gap” by publishing in the area covered by the second magazine.

1. Choose a name that can serve as a trademark from the day you start to publish. A title that identifies a class of magazine about certain goods or services, such as “Software News” or “Video Buyers Guide,” is generic and can’t be owned by one person or corporate entity.

A title that merely describes the magazine’s subject matter or its readership (such as “Aviation” or “Snack Food Merchandiser”) is also a poor choice. You can’t prevent others from using a descriptive title unless you can prove that consumers have come to identify that title with your magazine–or, in the language of trademark law, that the title has acquired “secondary meaning.”

Proving this is not easy. First, you must show that you have used that title on that magazine for a long time; that you have spent substantial amounts of money to promote the title; and that you have substantial sales in your target market. Courts also look for other evidence of reader recognition, such as surveys or unsolicited media coverage of your magazine. Compiling this evidence can take hundreds of hours, and it can cost a fortune for your attorneys to prepare the data for submission to the court. If “secondary meaning” looks like the only way you will be able to keep others from using your title, choose another.

Your title also must not be deceptive. A private publisher was ordered by a court not to call its publication “United States Navy Magazine” because people would think that it was affiliated with or sponsored by the government. Your best bet is a totally arbitrary or fanciful title that has no apparent relation to the subject matter of your magazine–such as Redbook or Thrasher. Or, if you want the title to give prospective readers some clue to the magazine’s contents, choose a title that suggests the subject but requires some thought on the reader’s part, such as SmartMoney for a magazine on personal finance.

2. Make sure that your title isn’t confusingly similar to the title of any other magazine or ancillary product on the same or a related subject. Always err on the side of caution: even though you may be able to make a good argument about why confusion isn’t likely, your life will be a lot easier if you don’t have to waste time and money doing so.

Choose a different name if your title is being used in another medium or for services to the same subject or prospective audience. After litigation, Penthouse International was prohibited from using the name “Nova” for a science magazine on the grounds that people were likely to think it was related to the television science program of the same name. These days, with publishers routinely expanding into ancillary businesses, it is especially likely that consumers will assume a connection between a magazine and another product or service on the same subject.

The most effective way to avoid such conflicts is to have a trademark lawyer commission a trademark search. This will tell you whether names similar to your proposed title are being used elsewhere or if they’re covered by registrations or applications in the United States Patent and Trademark Office, or by state registrations or applications. If any such marks do turn up, your trademark lawyer can tell you whether they actually raise problems and, if so, how to proceed.

© 1994 Jessica R. Friedman