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: email@example.com
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:
There's a romance author, Faleena Hopkins, who is sending takedown notices to other romance authors because she thinks she has a trademark on the word "Cocky." Which she doesn't have, but is hoping her threats make people change their titles.
— Christopher Sebela (@xtop) May 5, 2018
I am not familiar with Ms. Hopkins, but I was able to tentatively verify the following:
- 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:
- 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.
- The exact mark registered in the above registration is described as “…the wording ‘COCKY’ in stylized form,” and it looks like this:
- 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.
A 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:
- 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.)
- 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.