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Zoey, JD
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Hello, I hope that you can help me. Im a UK based author,

Resolved Question:

Hello, I hope that you can help me. I'm a UK based author, and have received a cease and desist letter from a US law firm regarding the title of my self-published novel EDEN. The title, it is claimed, is protected by trademark law under the Lanham Act and I may not use it for a series of novels. I have been ordered to change / remove the title or face legal challenges.

My title is one of several hundred novels with Eden as a title or as part of a title. Can they enforce this demand? I have written to them in reply saying that I will comply, but I wanted to check first before committing to anything.

Hope that you can offer some insight into this occurrence, as it's completely caught me off guard. I had no idea a word like Eden, which has existed for hundreds of years, could be trademarked in this way.
Submitted: 2 years ago.
Category: US Law
Expert:  Zoey, JD replied 2 years ago.
Hello,

My name is XXXXX XXXXX I am a US lawyer.

There are law firms and people of dubious ethics pretending to be law firms who try to intimidate people into paying money for copyright violations that they did not commit.

While the content of books can be copyrighted, their titles can't be.

So, under US law you would be free to use the title Eden. You can see this for yourself here on this pamphlet from the US Government.
Customer: replied 2 years ago.

Hello Fran, thanks for your reply,


 


Unfortunately my question does not concern copyright law, but trademark law as I've made clear. The page you have linked me to itself states clearly that the Copyright Office has no role in trademark affairs.


 


My question is whether or not a cease and desist demand can be made of an author of another work with a similar title and be enforceable. The demand has been made presumably because of an "unfair competition" part of the Lanham Act, despite my book looking completely different, having a different font for the EDEN title ( whereas the claimant's title is a logo, not a plain font ), different cover art, a different author ( obviously ) and differing storylines that do not conflict or affect each other's sales. As far as I can make out, the Lanham Act is being used to prevent me using the EDEN mark for a series of books, but the letter demands I cease using the word itself in any context, i.e, in videos, adverts, my web page and so on. This seems to be an excessive use of force, and a form of scare tactic as you have mentioned, in the manner of trademark trolls.


 


Can you please advise me on whether I should roll over for them, or ignore any further demands on the basis that it's a misuse of the trademark laws.


 


 

Expert:  Zoey, JD replied 2 years ago.

Hi,

What I've found is that you cannot trademark a single title. So, if the other author has a book named Eden, that title cannot be trademarked and you cannot violate that trademark.

If, on the other hand, an author has an entire series named Eden, then that name could be trademarked and your book title could violate that trademark.

I do know that this sort of letter is a well-known racket. It seems like overkill to me too. There are no US Intellectual Property lawyers on this site, however. If you require a more in-depth analysis of your rights in this area, I'd recommend visiting JustAnswer.co.uk's sister site at JustAnswer.com and posting a question directly to US Intellectual property lawyers.


Zoey, JD, Criminal Defense Lawyer
Category: US Law
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Experience: Over 20 years of high volume criminal defense work,including all aspects of a case from arraignment to plea or trial.
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