Opposition to Trademark for “Quantum Series”

by Douglas Phillips

Sometimes, we get dragged into legal battles whether we like it or not. This happened to me, and I want to be sure every author hears the story, because it could happen to you too.

In 2016, I started a series of books collectively called the Quantum Series. My first book did very well, and because of the sales ranking at Amazon, it may have been noticed by a romance author who also has a series of books using the same name. In January of 2018, she filed an application to trademark the words “quantum series” (find it here). The USPTO explains that a trademark must be unique to the products for which it is claimed. Now, it’s possible that this author thinks “quantum” is a unique word, but those of us who inhabit the world of science know better. There’s little question that quantum is what the USPTO calls a generic word. Such words are normally not available for trademark (though the USPTO may still issue them anyway). I found out about this trademark in May from another author who monitors a Twitter bot called @cockybot, and I quickly filed a “letter of protest” with the USPTO.

If an author gains a trademark to a common word, they can send cease and desist orders to other authors who use that word in a book title. Scary, huh? This happened last year to the romance genre when the one author received a trademark for “cocky.” Yes, really! Learn more about it here. Many other authors with “cocky” in their titles were taken down by Amazon! Now with quantum, the nightmare is starting again. My letter of protest was accepted, but the USPTO still advanced the application to the opposition phase. This is where it gets expensive, and an author can spend thousands of dollars to fight a case (even before it reaches the courts).

Happily, SFWA has joined the fight. On August 10, their legal team filed an opposition with USPTO on my behalf. Assuming the USPTO accepts it, the applicant will have forty days to respond. We don’t know what’s going to happen. The trademark could still be issued. Or the romance author may back down and give it up. That’s what ultimately happened in cockygate. Stay tuned.

Does any of this make your blood boil? Spurious trademarks hurt everyone: authors, readers, agents and publishers by suppressing creativity and locking out everyone but the trademark holder. Why should one author claim the right to exclusive use of a generic word? Why does the government let people get away with it? The answer is complicated, but we can all help. Use social media to inform readers and other authors. Tweet. Post. Let everyone know (including those few misguided authors who think they need to lock down a word) that SFWA and other authors’ organizations are standing up to this trend. Use hashtags to ensure widespread visibility:  #cockygate, #quantumseries #wordsr4everyone

I can’t thank SFWA enough for their support! What a great organization. I’m proud to be a member.

•••

Douglas Phillips is the best selling author of the “Quantum Series,” a trilogy of science fiction thrillers set in the fascinating world of particle physics where bizarre is an everyday thing.

Doug has two science degrees, has designed and written predictive computer models, reads physics books for fun and peers into deep space through the eyepiece of his backyard telescope. Doug splits his time between Seattle and Tucson, travels the world with his wife, hikes with his two sons, and becomes a child all over again with his grandchildren.

“I love science fiction, especially stories that begin with real science and go from there. I’ve studied a wide range of science throughout my life. Now, I’m turning that experience into the stories I’ve always wanted to read​.”

 

6 Responses

  1. Parker Hood

    I guess not even literature is safe from these kinds of trademark issues. The video game industry can be the same way sometimes. A notable example being Tim Langdell, who changed his company name to “The Edge” in the 80’s and subsequently trademarked the word “edge” in regards to video games. And he went at anyone who used that word, too. He went after Namco when they made a game called “Soul Edge”, causing the international release to be rebranded as “Soul Blade” and every subsequent game in the series to be rebranded as “Soul Calibur” (misspelling included). Went after a games magazine called “Edge” and took control of it. Also tried to force an indie mobile game to give him 25% in order to use their chosen name of “Edge”. Of course, his reign of trademark terror when he went up against the huge company that is Electronic Arts (EA) and their game, Mirror’s Edge.

  2. Rick

    This is beyond insane. The word Quantum is part of the modern scientific AND literary lexicon. Regarding the trademarking of term “Quantum Series,” one could make the case that, although they are both literary works, their not in the same genre nor are they used in the same context.
    A legal case could be made by citing precedent that has already been established in the music industry, specifically, Apple Corp. vs. Apple Computer. Apple Corp. is the British record company that sued Apple for trademark infringement. It was settled that since, at the time, Apple wasn’t in the music business, they would share trademarks so long as Apple didn’t delve into music. That case had to be revisited as time passed and as Apple developed iTunes.
    Here’s a reference link: https://sites.udel.edu/cisc356/2014/04/21/apple-corps-v-apple-computer-1978-2006/

  3. Daleth

    IP lawyer here. Words are not generic by themselves. They’re generic in context, that is, in association with a certain product or service. If everyone calls portable computers “laptops,” for instance, then “laptop” is generic for portable computers — and that means no one company that makes portable computers can trademark the word “laptop” for portable computers.

    But someone could still trademark “laptop” for something else. A few silly examples: a lap desk, or a shawl designed to lay across your lap, or for that matter a top (shirt/bra) that you’re supposed to wear while swimming laps… any of those products could be the subject of a trademark in the word “laptop,” because “laptop” is not generic *for those products.* It’s only generic for portable computers.

    That’s how trademarks work: you’re only trademarking a word for the specific product(s) or service(s) listed on your trademark application. Apple has trademarked “Apple” for computers and phones, for instance, but you can still use the word “apple” to sell apples, apple pie, or any other product or service that isn’t related to Apple Computer’s products and services.

    Here’s a test for whether a word is generic. If I say “laptop,” do you instantly think of a portable computer? And do you think of any particular manufacturer’s portable computer, or would the word work for all of them? It works for all of them, so it’s generic. Run the same test on other words: aspirin? Does that just mean any pain relief pill, or at least any pain relief pill using that particular main ingredient? Yes. That’s why “Aspirin” is officially generic in the US (even though it started out as a trademark for Bayer’s salicylic acid pain reliever).

    As for “quantum,” the only product that I can think of for which “quantum” might be generic is a quantum computer. It’s not generic for novels — when I say “quantum,” do you instantly think of novels? Nope.

    I’m glad to see from the USPTO filings that the case settled with the romance novelist agreeing to amend her trademark application so her trademark only applies to romance novels (not novels in general) and only where the entire term “Quantum Series” is used, not just the word “quantum.” That’s great and I’m glad the SFWA legal team got involved. I just dropped into the conversation to help explain how trademarks actually work.

Leave a Reply