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[Sheena Z]

Hello,

I am writing a series of books that was in part inspired by a former employer of mine at a book publishing company. I shared with him the title of the series, the outlines of the plots, and several chapters from the first book. We have since fallen out and he sent me a note saying he was applying for a trademark of the title of the book series.

Can he do this? First of all, it's my series--I'm writing it and I came up with the name of the series. Second of all, I thought you couldn't trademark something that was not used in commerce, i.e. since the books haven't been written/published yet, they can't be sold, and thus can't be trademarked. I'm very foggy on what "first use" means.

So is he just blowing smoke, or could he legitimately steal my title from me?

[Sheena Z]

Addendum question: If his application does go through, I obviously want to file a Notice of Opposition. Can I pre-emptively file this before the Publication for Opposition, or do I have to check the Trademark Official Gazette every week for the next several years to see if his trademark has been registered?

[Isaac]

A very interesting question.  The title of a single book is not
a trademark but trademarks have been used for series of books.
Being the first to think up a trademark does not generate any
protectable rights.  There are two ways to generate a protectable interest.
You can use the trademark in commerce, or you can register an intent to use (ITU).
An ITU does not become a "real" trademark until it is used in
commerce, but it does reserve a place.

Anyway, from the facts as presented, I don't see a protectable trademark
interest.  Perhaps the former employer's action involves some
other protected right, but I don't see a trademark answer.  Perhaps
the employer can pursue an ITU.

[JSonnabend]

To add to Isaac's answer, which I believe gives you a good overview of TM rights, you cannot file an opposition until the opposition period, but you can file a letter of protest before then.  I generally advise against such letters, but others suggest they may be helpful.

- Jeff