Wednesday, June 2, 2010

Health program needs name protection

Dear Rich: I'm developing a health-related program that will consist of a book, audio program, user-oriented website, and possibly other materials later, including software and a second book and audio program. The first product will be released this summer or fall.  In 2009 I settled on the program's name and reserved that exact domain name. At that time a search indicated that neither this title (or anything close to it) was in use.  This past week I did another search and found that a UK publisher is set to publish a book at the end of summer 2010, using the exact name of my program, domain name, and anticipated book title. (Their book is also on the same topic and is already listed as "to be published" on Amazon US.) I'm considering politely asking the UK publisher if they would consider changing their title, since I previously owned the domain name, and I imagine they would prefer to avoid marketplace confusion as well. Would it be worthwhile to file an Intent to Use trademark application at this point, and would that further my case in asking if they would consider changing their book title?  Apologies for the long-winded question. You may notice that your question is not as long winded as when you sent it. We cut it by half so please don't sue us for creating an unauthorized derivative work. Anyway, your letter came at a good time because the Dear Rich Staff is rediscovering a lot of their old health/exercise DVDs, particularly the Anna Caban Pilates program with Anna and her pal, Tara. (Not the yoga Tara.)
Right, you had a question. We know what you mean when you say you've got the perfect title for your book. We once had the perfect title for a murder mystery we wrote but then it turned out everyone hated the title, so go figure! Anyway, one thing we know about the publishing world is that it is unlikely that the British publisher will change their title, no matter how nicely you ask. The choice of a title is made long before the book comes out and it's tied to things like catalogs, distribution data, ISBNs, CIPs, and lots of other pre-marketing details. If you're seeing it on Amazon, chances are good that the book is in production. Unless there is a showstopper of a lawsuit headed its way, the publisher will not want to change the title. 
Trademarks, book titles.  Filing for the mark for your program (you can't get it for a single book title) will not preclude the British use. If the British book is released in the U.S. before your intended use, the publisher might have a claim against you under unfair competition laws.  
Consider the possibilities. It's always possible that the British book will appear and then disappear. (At least that's what happened to a lot of our books.) And, you also have to consider the possible responses by the publisher to your contact. There's always a chance that it may trigger an angry letter. We think you need to be patient. Is there any way to modify what you have and still take advantage of your domain name?

Dear Rich On the Road. Hey we're packing the tour bus with Advils, jamming the flashdrive with some mad PowerPoint, and loading up the Kindle with Elmore Leonard as we head out on our summer speaking tour and extravaganza. First stop is the Society for Scholarly Publishing in San Francisco where we'll speak on copyright and licensing ... then off to ... off to where? Gee, is that all we've booked so far? Oh wait, August 15, we're talking somewhere about something ... Okay, we'll get back to you on that one.