Is this protected by trademark?

Question

For the past several years I have been working on a self-published comic book. The name of the comic is also the name of the character. The name is very simplistic, let's pretend the name is "Cat". My comic has recently been picked up by a major publisher and we are working out the final details of the contract

However...

There is a man who wrote two short stories several years ago, both published in a little known magazine or book, with the main character named "Cat" (I believe the name was also used in one of the titles). He is claiming that he has the trademark right to this name, because his work was published a few years before mine, and wants to turn the story into a comic. I filed online for a trademark of my comic, however, I learned he filed for a trademark as well, just two days before I did.

My question is, would his two stories and an intention, without any artwork or character concept, be protected by trademark?

Also: He emails me numerous times a week, up to 3x a day, even though I have stopped responding. He refuses to talk to my publisher and he is not using a lawyer, to my knowledge.

Answer 1

Your trademark question is intreguing because he could be right... now, generally, a title of a literary or artistic work is not subject to trademark protection, but it may if there is a series of works. And a comic might be part of the "zone of natural expansion" of his common law rights in books. And, additionally, the character may be a trademark, but that's usually a higher hurdle than a word mark.
If his use is a valid trademark use, you may have an issue (unless your mark is so generic or descriptive that neither of you can be said to have rights). My advice is to make sure your publisher knows about this controversy. They have attorneys whose job it is to clear this stuff all up.

This will be a great little case for some litigator of your publisher. This guy may be crazy (although is priority in both use and registration is problematic) or he may have a legitimate complaint. Seek counsel, or make sure your publisher sends this to an attorney, sooner rather than later (because the traditional remedy for trademark infringment is an injunction--you don't want to have 1,000,000 books printed and then find out that you're enjoined from selling them.)
Good luck!

Answer 2

If the title is indeed a generic term like 'cat', then a trademark won't be granted in any case. A few years ago Microsoft brought a case against a comany called Lindows because it was too close to their own trademark Windows... and then withdrew when they realized the court was about to rule that Windows was too generic to be trademarked in the first place!

I'd ask your publisher to deal with it through their own legal dept.

Answer 3

I suggest that you talk with your publisher to handle the legalities from here on forth; and get a lawyer of your own. the fact he filed a trademark application before you did means nothing, until its granted. he could have filed before you did, but if they dont grant him the trademark, you still have a chance to get that trademark.

But, i suggest that you consult a lawyer to issued a cease and desist letter to the "man" and that any further communication must be done through your lawyer and/or publisher.

Tell him, its out of your hands until the trademark is granted/dismissed.

Answer 4

you're saying, "no person has trademarked the call i pick to apply." that's a typical false impression. under US regulation, you do no longer might desire to register a hallmark to very own it; you purely might desire to "use it" earlier every person else. A registration (state or federal) provides the owner specific statutory and evidentiary reward, yet isn't continuously needed for enforcement against a later person of an identical mark. honestly, any past proprietor of an identical type in an identical industry (registered or no longer) might desire to report an opposition in case you attempt to register your mark federally, and tie you up with criminal expenses for a pair of years. in case you pass forward and use the call, you may desire to be sued under state or federal rules, whether the registration became no longer in effect. TESS and Google are swell "screening" tests, yet you may might desire to hunt all fifty states (and greater) to be certain you're actually not begging for hassle. you have already discovered ability hassle. TESS is likewise a sprint no longer hassle-free to apply in case you're searching for marks having "comparable" sound, visual allure or meanings that would additionally be infringed by using your new suggestion. in case you could argue that your products or services is materially distinctive, you have gotten an excellent gamble to apply the mark or maybe register it. you're generally better off changing your mark to stay away from criminal problems.

Answer 5

Sounds fishy to me. Perhaps you should contact the copyright office in D.C. and the Attorney's General office in your state.

What are hundreds of millions of petowners to call their, shall I dare say, "cat"?

I am a poet, when I write I make a copy and send it to myself (post-mark copyright) until I get a group and then put together another anthology of MY work to copyright through DC.

GOOD LUCK!