Romance Author Gets Unduly Cocky Over Registered Trademark

UPDATE 05/07/18: Reports that Amazon is advising publishers of takedown notices are circulating online. Please note that there are TWO KINDS of takedown notice Amazon can get, and then advise sellers of. The first is a copyright takedown, often referred to as a DMCA Notice (though there are other kinds.) The second is a trademark takedown, often referred to as a Brand Registry takedown (though there are other kinds.) THEY ARE NOT THE SAME. Sending a DMCA counter-notice in response to a trademark takedown will be ineffective. Brand Registry notices can be very difficult to deal with. I recommend anyone who wants to fight one retain an experienced trademark attorney.

FLASH UPDATE: Retired IP litigator and author Kevin Kneupper has filed a Petition for Cancellation of the “COCKY” standard character mark. Link to his filing here: https://twitter.com/kneupperwriter/status/993359859071381505. The petition will now be considered in due course by the Trademark Office. We should not expect to hear anything for a few weeks, and the matter could take months to resolve. But in the meantime the registration stands and the risks remain.

Please Note: As I type, this appears to be a developing situation. The trademark in question was registered literally only three days ago. I have not seen any of the C&D letters people are alleging are going out. Nothing in this post should be taken as legal advice or even as verified fact. This is for general education only.

Also please note that the Romance Writers of America, an industry group, is allegedly also looking into this matter. They will probably provide a centralized response. Author Liliana Hart reports that the RWA requests that people who are contacted by Ms. Hopkins or her attorneys contact Carol Ritter of the RWA at this email: carol.ritter@rwa.org

If you get a cease and desist letter or any other form of legal communication, you may find my “HELP, I JUST GOT A LEGAL THING!” post useful. Click here to read it.

UPDATE: I did not see that the publisher had two trademark registrations, one for the standard character mark, and one for the stylized mark. Post edited accordingly.

Now on with the post.

This evening I started seeing tweets like this one:

I am not familiar with Ms. Hopkins, but I was able to tentatively verify the following:

  1. Ms. Hopkins is in fact a romance writer, published by “Hop Hop Productions,” hereafter “HHP.”
    Here is her website: https://www.authorfaleenahopkins.com/
    Here is a link to one of her books on Amazon, which specifies that HHP is the publisher:
    https://www.amazon.com/gp/product/B01H7RZDR8/
  2. On May 1, 2018, the United States Patent and Trademark Office issued a registration certificate to Trademark Reg. No. 5458137, for “COCKY,” for the following goods: In IC 009: A series of downloadable e-books in the field of romance. IC 016: A series of books in the field of romance.
  3. The exact mark registered in the above registration is described as “…the wording ‘COCKY’ in stylized form,” and it looks like this:

    Mark as registered for books and ebooks.

  4. NEW INFO: On April 17, 2018, the United States Patent and Trademark Office issued a registration certificate to Trademark Reg. No. 5447836, for “COCKY,” for the following goods: In IC 009: A series of downloadable e-books in the field of romance. IC 016: A series of books in the field of romance. Unlike the previous registration, this is a standard character mark registration. (See below.)

Now, there’s a lot to unpack here. First of all, what we have here is a registered trademark for two specific classes of goods. Let’s break that down.

trademark is something which identifies the source of a particular good or service to consumers and potential consumers of that good or service. (From now on I’m just going to say “goods,” but remember it can be services too.) It doesn’t have to specifically identify the source. For instance, the famous trademark “Budweiser” identifies the source of a certain type of beer. Almost no one who drinks Budweiser, I am willing to bet, knows that Budweiser is, ultimately, a product of a giant Belgian brewing conglomerate called InBev. But they do know that when they buy a beer labeled “Budweiser,” they will have a certain kind of beverage experience. And that is the point of trademarks: they protect consumers by preventing them from being confused as to the source of a good bearing the mark. If there is no risk of confusion as to the source of a good, there can be no trademark infringement. (Fn1)

A registered trademark is one which has been registered with the United States Patent and Trademark Office. This requires filing a form, paying a fee, and navigating a registration process. If you successfully complete the process, you get a lovely certificate. (They look like this.) This lovely certificate gives you some pretty nice legal benefits, including a presumption of validity and the right to sue alleged infringers in Federal court. You do not have to have a registration to sue someone for trademark infringement: you just have to allege (and then prove) that they caused confusion, or a likelihood of confusion, in the marketplace by using a similar mark. You don’t automatically win if you do have a registration, because registrations can be attacked, and even if they are not successfully attacked, you still have to prove infringement.

Trademarks, remember, identify particular goods. You cannot register a trademark for every kind of goods. You can only register it for goods you are actually selling, because if you are not selling a particular good in association with the mark, there can be no confusion and therefore no infringement. (Fn2.) So when you register the mark, you must identify the particular goods you are going to use it with. Incidentally, this is far and away the trickiest part of registering trademarks, because it looks very simple, and it is in fact very complicated, and it’s why you should hire a trademark attorney even though I know you’re very smart and can read instructions.

In any event, you will note that HHP registered the mark in Class 9 (which is for computer software, including ebooks) and Class 11 (which is for regular books) for: “a series of books.” That is because in the US, the rule is that you cannot claim the title of a single book as a trademark. (See: https://www.bitlaw.com/source/tmep/1202_08.html) Titles are inherently descriptive, and for good reasons I will not go into that means you can’t claim them as trademarks.

So, first issue: Only using the mark in association with a series of books can infringe the mark as registered, because that is what it is registered for. Normally there is sort of a buffer zone for similar goods, or something we call the “zone of natural expansion,” but with book titles, not so much. Using it in the title of a single book, under most circumstances, cannot constitute trademark infringement. So if in fact the publishing company and/or its attorneys are representing that using the word “Cocky” in the title of a book infringes the trademark, they are likely in error.

Next issue: You must identify the mark with particularity, so that your competitors know what it is they are not allowed to do so as to avoid confusion in the marketplace. You can’t register “words starting with ‘M’,” or “words that rhyme with ‘fish,'” or “any symbol that looks vaguely like a star.” That’s not useful to particularly identify goods, so it can’t be used as a trademark.

There are two kinds of marks that can be registered:

  1. Standard character marks, which are just that – marks which constitute a word or words in one or more languages, or even an arbitrary string of characters or a made-up word, so long as it is made of standard characters. (In fact, arbitrary words or made-up words are in some ways the best kind of trademarks.)
  2. Non-character marks, which are every other kind of mark there is. These include logos, pictograms, symbols, colors, sounds, or even smells.

This is a crucial distinction because any use of a standard character mark or something confusingly similar to a standard character mark, even if the typeface is different, in association with similar goods, is likely an infringing use. This can even apply to the same word in a foreign language (if you have a registration for “Dog” brand sneakers and somebody tries to sell “Perro” brand sneakers, they may be infringing.) Or words with a confusingly similar sound (a mark for “Doggie” brand sneakers is likely infringed by “Doggy” brand sneakers.)

On the other hand, a non-standard character mark can only be infringed by use of a mark which is confusingly similar to the mark as registered, and/or as used in commerce. (You have to provide a specimen or sample of the mark as used: that’s what is used to compare alleged infringing marks.) So if you have a registration for, oh, let’s say, “Rooster,” in a fancy brush script and with a little graphic comb on the top, I may or may not be infringing it if I use the word “Gallo” in Comic Sans on my similar goods. This is especially true if the registration contains a disclaimer to part or all of any words which may appear in the graphic.

Given that the registration at hand is for the wording “in stylized form,” what we have here is a non-standard character mark. (Fn3.) For this reason, especially since this involves a book title, unless a particular book uses the wording “COCKY” in the same or confusingly similar stylized form, if in fact the publishing company and/or its attorneys are representing that using the word “Cocky” in the title of a book infringes the trademark, they are likely in error.

NEW INFO: It appears that the publisher also has a registration for the mark as a standard character mark. It’s quite common to register both a standard character mark and a non-standard character mark which contains a stylized version of a standard character mark because that way if your standard character mark registration fails, you can fall back on your non-standard character mark. So this part of the analysis does NOT apply to the registration that is just for the standard character mark “COCKY.”

Final issue: The way a producer of goods accrues trademark rights, as I said above (go look, I’ll wait) is to use the mark in commerce in association with the particular goods at issue. You (usually) cannot try to claim something as a trademark when someone else was already using it for similar goods, because assuming an association could be formed between those goods and that mark, it has likely already formed in relation to the goods already on the market. And if it hasn’t formed, that is an indication that is is unlikely to form in the first place. In any event, prior use of a trademark almost always preempts attempts by a later user to claim exclusive rights in a mark.

It took me about seventeen seconds to locate several romance books on Amazon with the word “Cocky” in their titles which were published before the alleged first use in commerce of the mark by HHP. (In fact, I found what is arguably a series of books using the mark to identify a series, which makes the registration itself sort of iffy, but that’s a separate issue.) So for this reason as well, if in fact the publishing company and/or its attorneys are representing that using the word “Cocky” in the title of a book infringes the trademark, they are likely in error. Or, at least, any attempt to enforce the trademark against such goods would likely open the trademark registration up to attack and potential invalidation on the grounds of prior use and/or lack of distinctiveness.

Now, as I said to start with, this is a developing situation, and I can’t confirm any of the facts being alleged regarding the alleged cease and desist letters being issued by the publisher and/or their attorneys. There could be, and likely is, more to the matter than is now publicly known. I am not accusing Ms. Hopkins, HHP, or its attorneys of any wrongdoing or unethical behavior. And nothing in this post should be construed as legal advice concerning any particular trademark or allegation of trademark infringement. If you receive a communication alleging that you are violating the rights of any other party, please consult an attorney licensed in your jurisdiction and familiar with the relevant law.

I hope that you found this post helpful, or at least informative. As always, I welcome questions in the comments or via email, with the understanding that unless and until you retain me as your attorney you should not base specific legal decisions on anything herein. Thanks for reading!


Fn1. There is another thing that can cause legal problems with trademark misuse called “dilution,” but that is beyond the scope of this post. It is probably not an issue here. Return to text.

Fn2. There are “Intent to Use” trademark registrations, but those basically just hold your place in line. You cannot enforce an Intent to Use registration, you must begin actual use in commerce and convert it to an in-use registration. Return to text.

Fn3. In fact, the record for the registration process shows the description of the mark was changed from “The mark consists of the literal element in a script design” to “The mark consists of the wording ‘COCKY’ in stylized form.” Return to text.

99 comments

  • I’m a little confused. The series is called The Cocker Brothers, not Cocky anything, she’s just used the word “cocky” in her titles. So how does the use of the word “cocky”become a series thing?
    If I publish a series about some people named Cocke and subtitle each book, A Cocke Family Affair does this infringe on her TM?
    Because she seems to be implying anything close is confusing and thus an Infringement because her loyal readers keep buying books that aren’t hers……..not going there but, really?

    • She’s apparently (re?)branded the series as both “The Cocky Series” and “The Cocker Brothers,” judging by her enthusiastic use of the Circle-R mark in the identifiers for her books. I can’t answer your specific question because that would be a little too close to specific legal advice but in general, my response is also more or less “Really?”

  • May 5, 2018 at 9:43 am // Reply

    This was an excellent write-up! Thank you, Marc! Some additional background: The author in question is targeting authors with “Cocky” in their book titles (not series titles). She has made the claim that her readers were unable to distinguish between her own books “Cocker Brothers: The Cocky Series” vs other books that used “Cocky” in the title. Her attorney did respond to another author’s question and explained that they can fight book titles (not just series titles) because of brand confusion. In an interesting defense of her trademark of the word “Cocky” she has reported several titles to both Amazon and Audible as being in violation of “copyright.” So far, the authors she has threatened with legal action either have no legal counsel or their lawyers explained that it is cheaper to change the title rather than fight the trademark. Presumably, the more of the smaller wins she gets, the easier it will be for her to take on bigger name authors who used the word before she did or more successfully than she did. The romance community is nervous about the precedent this sets. What’s to stop someone from trademarking “love” or “billionaire” or “the”?

    • Thank you for the additional information. If they are in fact reporting copyright violations, that’s a TOS violation. If she did that to one of my clients (I am not saying she did it to anybody, I am speaking hypothetically) she would be very, very sorry.

  • May 5, 2018 at 11:04 am // Reply

    I’m one of the authors with a “Cocky” title.

    She PM’d me through my author page on Facebook to tell me she has the trademark, then told me she was reporting me to Amazon for copyright violation. In addition to the obvious issue of reporting authors for copyright violations when it’s a trademark, she didn’t give me (or other authors, from what I understand) an opportunity to respond or find out the legal ramifications for our books before reporting to Amazon.

    As a result, the paperback version of my book has been taken down from sale with no warning. The ebook is still available, but I’m not sure how much longer that will be the case.

    Thanks for the thorough breakdown. This is putting authors like me in a tough position. I’ve emailed RWA as has been publicly requested, but I’m just a little mid-list author. I don’t have deep pockets for a legal battle.

    • Thank you for speaking up. You are the first author who has contacted me who has been directly affected. I would be grateful if you would drop me an email with any specifics you are willing to share in exchange for a pro bono consultation. My contact info is in the menu at the top of the page.

      • I’m a blogger who’s been following this situation for a few days now. That’s how I found your website and learned a lot by reading this post.
        I just wanted to thank you for helping people understand what is going on and how those legal things actually work. Also, thank you for helping authors like this one, who can’t fight for themselves.
        I wish that the blogging community could do more to help, but it’s comforting to know there are people who are able and willing to fight for those authors and save the efforts of so many hardworking people involved.

    • Did you use CreateSpace for the paperback or KDP Print? and, has anyone had an ebook taken down? If the books taken down are all paperbacks and are all printed with CreateSpace, there is an answer there all by itself. I’d be interested to know if this has been the case. Just a few theories of my own…

    • Now please take this with a hefty grain of salt as I am in the legal field but not in the States, but this type of behaviour might open up an avenue for you to pursue compensation/damages from her if you can prove that she filed a wrongful report that got your books janked from amazon.

      I wish you all the best and I hope you’ll get to enjoy lots of schadenfreude soon.

  • Someone on Twitter pointed out that Hopkins’s use of the North well font in the trademark might also violate the terms of that usage license. So much fail here.

    • The general rule in the US is that you can’t copyright a typeface, though you can copyright the digital file that enables a computer to render it, which is quite frankly bizarre without a pretty deep background in multiple copyright questions. So it’s entirely possible she’s violated the terms of her license. I dunno.

      • The font in question apparently isn’t licensed in a manner that allows it to be used in designs like this at all, according to a representative of the company on Twitter.

  • Is it just the way the word style is? Not in the books themselves but just used in the title? I’m an author and I’ve never used that word in a title but I have used it IN the book. I have to be honest here and say that I think this is absolutely ridiculous. I don’t use certain name brands in my books because they are copyrighted but the word “Cocky” is just crazy. I don’t know this author and I prefer not to. Unreal!

    • The publisher has registrations for both the stylized version and the word as a word.

      The mark has to appear where it could cause confusion in a buyer or potential buyer’s mind: while there’s no bright line rule that says it has to be on the front, on the cover, on the box, or what have you, using the word in its usual and customary meaning in the text of a literary work is unlikely to be an infringing use in most contexts. But of course, it depends.

  • Thank you for this great explanation. Copyright, Trademarks, etc. can be very confusing. I do not think this author will “win” in the end, but I do think she is making a lot of people, like the above commenting author’s life hell for the time being. And I think the goal was just to have a way to report to Amazon and Audible copyright violations – because Amazon removes quick and asks questions later, especially if you can whip out paperwork like TM papers etc. Most authors that don’t have the resources to fight it, or have the patience to work around Amazon will just retitle – which is what she wants.

    • In a letter Faleena Hopkins sent to the author Jamila Jasper, Hopkins claims her attorney “has advised me that if I sue you I will win all the monies you have earned on this title, plus lawyer fees will be paid by you as well.”

      So yeah, Hopkins is bluffing and bullying her way through this, hoping her legal threats will be enough to force people to retitle their books.

      Plus it’s just awful behavior. I don’t know what Hopkins expected to gain by doing this, but it doesn’t seem like she put much thought into the negative consequences — the backlash, authors sharing screenshots of her threats on Twitter, people trolling her books with 1-star reviews, and turning previously ambivalent people into enemies.

      • I’ve been doing this for a while.

        I have noted that people often make decisions in anger about a single incident without considering the broader ramifications.

        I believe that is what initially happened here. Then either an attorney gave her very misleading advice or she heard something very different than what the attorney told her about how all this works. That happens a lot.

        • I agree, although the language in her letters seems pretty calculated for maximum intimidation. What’s interesting is she’s doubling and tripling down. I followed the link to her Twitter page and she’s posting about how she’s the victim of shaming, and how mean people are.

          I am just a layman and not anything close to a legal expert (great write-up and explanation by the way, Marc, putting it in terms the rest of us can understand), but doesn’t it say something that Hopkins herself is issuing these legal threats, instead of her attorneys?

          • That is my thought as well – and this is a general question and not one I expect anyone here to answer – why isn’t her attorney sending the C&D letters?

            Maybe she doesn’t want to pay him to do them as the cost “per letter” may be high. But still, I can’t see an attorney being okay with a client sending letters that state what he/she has advised a client.

  • May 5, 2018 at 1:35 pm // Reply

    I’m having a hard time wrapping my head around this. The word ‘Cocky’ is so incredibly common, either as book titles, series titles, or used within books, I don’t see how she can do this. If it was a logo I could see it. It reminds me of people who tried to buy the rights to URL’s before companies became web savvy. Those people tried to extort money from companies by holding their URL’s hostage. A judge eventually ruled against that practice and it has gone by the wayside. To me, if the word ‘Cocky’ is too confusing for readers to distinguish between her books and someone elses she should find a better series title. But honestly, anyone can easily see a difference in the author’s name between multiple book series with the word ‘Cocky’ in it. My own books don’t have the word ‘Cocky’ in the title of any book or the series, but I’m in the same boat as any other small independent author, I don’t have the money or legal means to fight a battle over this. It seems a bullying tactic, but in todays world that works. The fear of litigation is enough to make people cower and turn the other direction even if they are in the right. Thank you for the article though! It was more than worth the read.

    • Well Brad, she basically implies that her readers are stupid, being unable to distinguish her books from others. Most readers search for a book by author’s name first, rather than title. The vast majority of readers are insulted and infuriated by Hopkins’ actions, going so far as to return or delete her books and search out books from authors being targeted to purchase their books, instead.

      • This. I can’t even. I mean, how could she imply her readers are that stupid, not able to distinguish titles and authors names and book covers? I remember author names better than series titles or book title. IT’s just insulting for us readers that she implied we can’t know the difference between who’s whose.

        So now, I see her book rating on GR went down drastically just a few days after all these sh*t happened. Readers are MAD.

  • I went to her Amazon author page. She’s getting hit right now with 1-star reviews from the last few days, and I understand the anger but hate to see authors giving 1-star reviews about a book, when it’s likely something the author has done and they haven’t read the book. We complain about reviews for reasons other than how well or how badly our books are written.

    That said, before the last few days, she has some of the best overall star ratings of a book I’ve ever seen.

    Book after book, with hundreds of reviews, 4.8 stars average, 4.8, 4.8, 4.8, 4.7, 4.7, 4.8. Lowest one I found in the first two pages of her booklist was a 4.4.

    Who gets reviewed that well book after book?

    After what I just read about her, it makes me suspicious.

    • I’m with you on both fronts. I hate to see people write negative reviews for behavior, even bad behavior like this. But I find her high ratings and number of reviews on 18 books published in the last two years to be highly suspicious.

    • May 8, 2018 at 11:03 am // Reply

      Never mind that leaving reviews of any kind is like gold to an author — they push ratings up, even when the stars are low, and elevate visibility on Amazon, which is exactly what she’s after. She wants to be the only one people see.

  • Somebody else pointed out that Amazon prioritizes rank for any product with trademark protection. She’s found another way to game the algos. For now.
    Thanks for a lucid explanation.

    • Are you sure this applies to books? Would you be willing to share any more info on this, or where you saw it discussed?

  • This whole thing is a mess, but thank you for breaking the legal side down for us in such a great way. I understand you’re hesitant to answer questions, but I wondered if you could tell me if something like this is worldwide? I’ve been part of the book community for many years, and I have never heard of someone trademarking titles (I actually thought it legally couldn’t be done). From what I understood, this author has trademarked the word cocky for her series tirle, which would be her ‘brand’, not one word from the title of every book. If that was the case then what’s stopping someone from trademarking vampire, romance – hell, any word?

    • Thank you for your compliments.

      In general, trademark registrations do not travel across national borders. But registrations in one country can be used as a basis for registering in another.

      Different countries have different rules and those rules change over time. In the US, you cannot register the title of a book as a trademark because the use of a word or words in a title does not constitute use in commerce as a trademark. In other countries, this may or may not be the case.

      And nothing is stopping them except the vigilance of the trademark office and/or people willing to take legal action.

  • May 5, 2018 at 4:00 pm // Reply

    This is strictly FYI, but Jamilla Jasper posted what she claims* was a message from the author objecting to her use of the word Cocky. The discussion in the thread also mentioned the author’s use of a font which, under its TOS, strictly bans using it as part of a trademark.

    * Just being strict in my word usage. No implication implied.

    https://twitter.com/JamilaJasper/status/992795087800332288

    • Jasper published a book and gave it the same name, similar bookcover font, and a similar bookcover image (could it even be the same model?) to a book by an already established author competing the exactly the same niche genre.

      Can’t imagine what ticked Faleena off so much….

      • Assuming that is true, then Ms. Hopkins should have considered suing Jasper for copyright infringement or unfair competition, not tried to literally remove a word from the lexicon of romance authors.

      • It was a stock image.

        Browse through Amazon sometime, and see how many books in a certain genre share the same base image, with differences in colour, additional images and placing.

        Even my own books, which I flatter myself are fairly unique in both title and content, use stock images on the cover. I’ve seen at least one other book that used the same model in the same pose, but with a different background and holding a different item.

        • Yep. Seen it too. Sometimes it’s the same image, often it’s from the same batch. There is a stock image batch of a woman in a red latex jumpsuit and a motorcycle helmet which is VERY popular for a certain genre of sci-fi.

          The author in question has also alleged plagiarism of story elements (character names and identities) which she believes rise to the level of copyright infringement. Whether she’s done anything like file takedowns on such works, I don’t know.

      • May 7, 2018 at 3:19 am // Reply

        I saw the original cover by Jasper; it’s on Facebook. Jasper’s cover is very different. Model may or may not be the same, but he had shades and a cowboy hat on, the font doesn’t look identical, the shading was a deep tan, and the “niche genre” is interracial/multicultural bwwm–again, different from Feleena’s Cocky Cowboy book–of which Jasper’s published dozens and dozens over the past few years.

        And Feleena has used the same stock image (blond guy) that has been seen on dozens of covers.

    • In romance, covers are one of the ways we tell readers what the book’s about. Furthermore, each subgenre of romance has its own look. I write shifters and our cover composition tends to include the same elements. It’s the way they’re arranged and mixes with a color palette that distinguishes them.

      There are only so many romantic stock images out there. You see the same ones all over the place. Us real authors don’t have a problem with it. Hopkins is not a real author, as we define the word.

      She’s giving all of us a bad name. Which we fight against weekly anyway. She’s also destroying her own career.

  • May 5, 2018 at 6:19 pm // Reply

    Mark, the copywrite owner of the font lives in the UK, and didn’t give her permission to use it. He’s on vacation right now and will look into it further. We all agree it would be amusing for him to contact Amazon about it though.

    I love how thorough your article is and have shared it on multiple postings and groups. Thank you for taking your time to share your knowledge.

  • May 5, 2018 at 6:29 pm // Reply

    What I don’t understand is the trademark examiner(s) who registered a descriptive word like “cocky” on the principal register out of the gate. When I got my trademark on a descriptive phrase, I had to go on the supplemental register for 5 years until I could show it had developed a distinctive meaning.

    Also, there were clearly many other books with the word Cocky in the title. Did no one do their jobs and check?

    SHAME on the people in the trademark office. They are equally to blame as this trademark troll. TRADEMARK OFFICE: this is a clear case of being asleep at the switch. This should not stand.

    • The word “Cocky” has no descriptive meaning in the context of books or publishing. Thus, there would exist NO basis for refusing the mark under the “descriptiveness” requirement under Section 2(e)(1) of the Lanham (Trademark) Act.

      A word is deemed “merely descriptive” only when it’s descriptive in relationship to the goods or services sought to be registered.

      Former Examining Attorney, US Trademark Office 1988-1992.

      • Quite right, in the context of a series of generic books.

        However, if registering a trademark for a series of books worked the way she alleges it does (by causing a single book incorporating the trademark in its title to infringe the mark) then all anyone would have to do to get around the no-registering-titles rule is do exactly what she did. Would you argue that her mark as registered really means that no one can use the word “Cocky” in the title of a romance book without infringing upon her trademark rights?

        Further, I would argue that the term is descriptive when it comes to romance books: as several authors, editors and publishers have pointed out, if you see the word “cocky” in the title of a romance book, it tells you a great deal about what the book will be like (notably, what the main character will be like.) The word is already descriptive in the relevant market: removing it from the lexicon of publishers will actually harm consumers.

        It’s really a shame no oppositions were filed, as I think this would have been a much shorter and less irritating story had that happened.

  • Further to my above comment, it’s clear that the author sending out the letters does not understand the limitations of a trademark registration.

    Merely registering a common word for a specific good or service does NOT mean that others cannot continue to use that word in the course of normal events. Any other author/publisher is well within their rights to continue to use the word “cocky” in their writings, titles, descriptions, etc. The only “exclusivity” the trademark holder has is in marking the book with their “brand.”

    Even though it’s not as well known as the statutorily defined “Fair Use” elements in Copyright Law, Trademark Law has a number of similar safeguards known as “Fair Use” as well. These principles as a defensive measure, if sued or threatened, should prove sufficient to overcome any claims of exclusivity on the part of this author.

    The funny thing to me is that she just opened herself to lawsuits of her own by misusing the “take down notices” which are ONLY available to her under the Copyright Act, not under Trademark law.

    • Could not agree more, although of course the process could be the punishment in this case, since she has capital and a high-powered trademark attorney and many of her competitors do not. It is of faint consolation to say to such a client, “I can win this. It’ll cost you eighty thousand dollars.”

      I think that the reports of her using copyright takedown notices were in error: I did talk to an author who actually received a notice and it was a trademark notice. Amazon, as you probably know, has a trademark takedown system that is bru… I mean, extremely efficient. Their attitude is, “Once somebody has a registered trademark, we’re out: they can let the courts sort it out.”

      She was also alleging copyright infringement against some of her opponents, so it’s possible she’s mixing and matching.

      • May 6, 2018 at 1:17 am // Reply

        The problem with her mix-matching is that Amazon doesn’t check then act. They act then make you go through a lengthy appeals process with them, and in most cases don’t overturn their decision, which screws the authors.

        If she does this to many more authors she will have zero competition, which is what she wants from the way she is acting.

        https://www.facebook.com/authorfaleenahopkins/

      • I kind of doubt her “high powered” trademark attorney is actually involved in this to a large degree. If so, he/she is really putting themselves on the line as the threats and use of the DMCA in an effort to enforce a registered trademark under these circumstances shows a massive amount of ignorance of key IP principles. This could subject an attorney to legal claims and lawsuits against them with significant potential damages.

        No, I actually believe this author is doing this on her own, without the slightest understanding of what her actual rights are in the mark.

        BTW, I find Amazon’s ‘Trademark Registry” to be absolutely horrible and put together by someone who truly has little understanding of trademark law.

  • May 6, 2018 at 3:57 am // Reply

    Thank you for this wonderful breakdown. I’m a law student in Canada with an interest in IP, and while things are pretty much the same across common-law countries, I’m not well-versed in US trademark law, which seems to be quite a different animal.

    It seems to me that in terms of regulation, there’s an important difference between the “law proper” in terms of the courts, and the “rules in play” when it comes to private company policies like the Amazon Terms of Use. Satisfying the gatekeepers at Amazon seems to require a much lower threshold than it would take to satisfy a court, and Amazon’s combination of market dominance and hair-trigger infringement policies make them every bit as important an authority for indie authors to satisfy as the Court itself. An uphill battle toward a legal injunction doesn’t seem necessary when Amazon will just agreeably de-list any impinged text without too much thought on the matter.

    I’m not even sure how you’d “defend” within the context of company policy. Lawboy 87 mentions the “Fair Use” safeguards in trademark law, but where I’m confident a judge would recognize and consider those defenses, I’m not sure the Amazon staffers who list and de-list disputed books would understand or even be obligated to hear such arguments.

    I know when it comes to sites like YouTube, the infringement policies have been pretty heavily stacked in favor of the claimant, and wonder if it’s the same here as well. Even if there’s no “legs” to her claims, I’m not happy with the chilling effect that comes with them. A cease & desist is not just a demand letter in this case, but a propaganda tool designed to set off Amazon’s much more sensitive alarm bells.

    Given that I’m coming from a lot of case law reading and zero practical experience, I’m probably way off the mark in places, especially as I’m thinking about this in a completely different jurisdiction with no Lanham Act etc… but it’s certainly interesting to think about. I wonder whether the simple question of the venue in which the substance of the alleged infringement occurred would have her gallivanting from court to court across all 50 states if she wanted to take on a hundred trademark fights. Maybe the caretakers of Mickey Mouse have a war chest big enough for that kind of net-fishing, but if self-publishing erotica pays well enough to fund that kind of offensive, I’m in the wrong line of work.

    Anyways, thanks again for taking the time to lay all this stuff out in really straightforward language. If you’ve ever considered teaching, you’re as clear on the subject as some of the really fine profs I’m studying under. As an indie author on one hand and a future IP/entertainment guy on the other, I have two completely different dogs in this fight, and it’s been really great to have this perspective.

  • There appears to be a book series which predates her registration:

    Jax (Cocky Cage Fighter #1) 
    Lane Heart
    July 7th 2015

    I’m sure the RWA will apply for a cancellation. I suspect they will succeed.

  • I have a question regarding the other authors whom had their books published before Faleena. I have to say I am a on her Facebook page but am neutral. I, however, have worked in a law firm so the law aspect does fascinate me. If, those books were published before hers would they still give up the rights to their books and would it be in their best interest to Trademark their work too? I wish I had you as a prof. In college. It was a well written article!

    • The answer to that is, “It depends.”

      Rights related to trademarks survive so long as the trademark is used in commerce. If the mark is no longer in use, eventually the trademark rights will be extinguished. This doesn’t happen overnight, but eventually, it does happen.

      So if using a word in the title of a book in the ordinary course of publishing could be an infringement of trademark, which is likely not the case, then the publishers of those books which predate her usage would have to have been using it when she started using it, or not long before. I saw a cite to one book published in 1973. If it went out of print in 1983 and never came back into print, it would be difficult to argue that it could create an in-use bar to registering the trademark in 2017.

      I have discussed with other people in other contexts that the fact that e-books don’t go out of print will have some interesting effects on publishing practices. This could be a subject where that also affects legal practices.

  • It’s great that you’ve taken the time to break down and explain this #cockygate issue. As a non-legal person I was finding it really hard to understand the legal ramifications of this nasty ordeal. So thank you so much.

  • My day job involves accessing and enforcing trademark IPR cases. Thanks for the excellent post. This is going to help a LOT of people understand what’s going on.

  • May 6, 2018 at 9:21 pm // Reply

    I am a concerned writer and Australian. In Australia Cocky is a derivative of a native Aboriginal word, Cockatoo, therefore I am concerned a language for Australian Aboriginal people’s had been allowed to be trademarked. Regardless of form.

    http://nativesymbols.info/cockatoo/

    • Fortunately, trademark registrations do not usually travel across national borders.

      It is interesting to think that the word could have important connotations in another language for entirely different reasons.

      • It’s also the colloquial name given for some Australian farmers. A cocky is usually the guy in charge of the farm or station (large land holding used for livestock and grains). So, there’s that as well.

  • Marc,
    Thank you for the write up. You’ve got a really friendly way of writing that makes the reader feel not stupid and a great way of breaking complex stuff down into simple bits.

  • In reading – I am curious.

    If an author filed a Copyright for their book BEFORE this filing, does it protect them at all?

    This whole thing is mindboggling. BTW Mark – thank you for speaking English. It really helped me to understand better the happenings.

    • The answer to your question, sadly, is “It depends.” It very well could, but there are multiple factors at play.

  • So, I did a little poking around. Not only does she have hundreds of great reviews on Amazon, her books also have THOUSANDS of great ratings on Goodreads. Having spent three years blurbing books for an online newsletter that often mentioned Goodreads, as in, “The three-time RITA award-winning author earned roughly a thousand five-star Goodreads ratings for Book X,” I can tell you this looks fishy. I’ve been out of the romance loop long enough to be unfamiliar with many authors, but upon Googling her name, there are no reviews of her books in at least the first few pages of results. A blog that was in existence for a few months in 2017 raved over one of them, but that’s it. Again, highly fishy. I no longer work in the field, but if I were still in investigative mode, I’d definitely try and figure out what’s going on. Something really stinks about how she does business, and it extends beyond sending her own cease-and-desist letters.

  • First of all, thanks for this well written post.

    Just a bit of extra info: one of the people commenting wondered about the almost perfect rating on all of the books by this author. I checked all of them on Fakespot and ReviewMeta and the results were almost the same in both sites: F (fail) or unnatural reviews likely.

  • I just wanted to say thank you, Marc, for taking the time to put such a helpful explanation together in a way that we non-legal-speak folks could follow! Much appreciated!

  • May 12, 2018 at 2:07 pm // Reply

    I don’t understand the bit about series titles vs. book titles. Suppose I own the “For Dummies” series trademark. Wouldn’t I have cause against someone who published a single book with the title, “Trademark Infringement For Dummies”?

    By publishing a single book that includes the series name in the title, the publisher is implying that book is in the series. If I couldn’t sue under these facts, then it would seem a series trademark is completely worthless.

  • This is beautiful: difficult concepts, clearly explained in plain English rather than obfuscatorily depicted in lawyerese. If more of us wrote like this, we’d provide a lot more useful information (not necessarily legal advice) to a lot more people with a lot less richly deserved blowback on us for confusing rather than educating.

    Thank you.

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