A: Stephen
E. Gillen, Authoring Attorney, Greenebaum Doll & McDonald
PLLC:
"This has the
potential to become a problem. CEEB has a couple of federal registrations
for AP in connection with printed tests and educational information.
The tests for infringement or dilution are very subjective and
much will depend upon the precise way in which the mark has been used
in context. You should consider calling the potential problem to your
publisher's attention and let it decide whether to seek advice. If there
is a problem, it is possible (perhaps likely) that your publisher will
hold you responsible."
A: Zick
Rubin The Law Office of Zick Rubin, Publishing / Copyright
/ Trademark:
"Let me add a
few words to Steve Gillen's excellent advice. Although questions
of trademark infringement and dilution are highly fact specific,
the courts have adopted the general rule that 'nominative fair
use' of a trademark -- i.e., referring to someone else's trademark,
as you are contemplating -- is permissible, as long as the use
meets the following three requirements: 1. The products or services
in question (here, the AP tests) are not readily identifiable without
use of the trademark. [That seems to be the case for your use] 2.
Only so much of the trademark or trademarks may be used as is reasonably
necessary to identify the product or service. 3. The user must do
nothing that would, in connection with the mark, suggest sponsorship
or endorsement by the trademark holder. [For example: don't put the
words ADVANCED PLACEMENT or AP on the cover in big red letters, or
mimic the CEEB's AP logo, in a way that might suggest that your book
is an 'official' or sponsored AP resource.]
These requirements
were first set forth in one of the leading cases in this area:
New Kids on the Block v. News America Publishing, Inc. (Ninth
Circuit, 1992). It came about during the heyday of 'The New Kids on the
Block' pop music group, when USA Today ran a 'Which New Kid is your favorite?'
contest. The New Kids sued for trademark infringement. The court
held that such a use of the 'New Kids' trademark was permissible,
as long as it met the above requirements. Other courts have followed
suit. (Of course the New Kids themselves have been overshadowed
by Donnie's little brother, Mark Wahlberg. We Boston people know
about these things.)
Big companies
can sometimes be trademark bullies. In some cases, they
may try to stifle legitimate competition or comment by crying 'trademark
infringement.' But the bottom line (thankfully) is that a registered
trademark does not prevent others from referring to the mark in a fair
and reasonable way."
A: Stan
Gibilisco, TAA Member:
"My solution
to this problem, as an ex-engineer with a fondness for mil spec as well
as a childhood in a medical family, is to perform what might be called radical
excision of the offending words and symbols. I indicated to the publisher
that I urgently wanted all mention of 'advanced placement' or 'AP' removed
from the cover of the book. I proposed that the bullets state only
that the book can be used to prepare for physics questions on college
entrance exams.
I received a
reply from the publisher by e-mail to the effect that they would comply
with my wishes. I archived that e-mail, of course (as I do with them all,
even this one)."
