The USPTO has retracted its approval to publish and issued a rejection based on failure to function as a trademark. This is pretty much the worst thing that can happen to a trademark registration application. It means the mark can’t be registered even on the Supplemental Register or become a potentially registerable mark if it acquires secondary meaning/acquired distinctiveness. The only way to get around this type of rejection is to argue that the finding of failure to function is wrong, and that is not easy to do. Unless the applicant is spoiling for a long, difficult, and expensive fight, the registration application is probably dead.
Back in June, MSE Media, LLC, the management company (I assume) for the rights of bestselling author Michael Scott Earle, filed a trademark registration application for the word mark DRAGON SLAYER. You can see the filing information here:
At the time, there was some controversy, as the author community (especially the Internet/Indie author community) was on High Alert for trademark shenanigans following the “COCKY” word mark lawsuit. However, due to the way trademark registration works, there were a limited number of things that third parties could do at that point. I’ll explain briefly, and then discuss the particulars of the DRAGON SLAYER filing.
Trademarks, as trademark expert Ed Timberlake (of @timberlakelaw and Timberlake Law) is fond of pointing out, are not actually “granted” or “awarded” or “given” by the United States Patent and Trademark Office (USPTO) or its equivalent agencies in other countries. Trademarks are, essentially, earned. And the way you earn them is by forming an association in the minds of consumers between your product or service, and the trademark. (We usually refer to them collectively as trademarks, although linguistically it’s more correct to call the ones associated with a service “service marks.”) Once that happens, the law in most countries automatically starts to protect consumers by proscribing use of the mark by other people in ways that could create a likelihood of confusion in the marketplace.
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Previous posts on Cockygate:
Romance Author Gets Unduly Cocky Over Registered Trademark: http://legalinspiration.com/?p=503
#Cockygate Take Two: This Time It’s Judicial: http://legalinspiration.com/?p=538
Well, it’s been a weird ride. And although it seems like it’s been forever, in Federal court case terms, it’s been a fairly short one. Yesterday Faleena Hopkins and Hop Hop Productions filed a Motion to Dismiss with Prejudice in Hop Hop Productions Inc. v. Kneupper et al:
If the judge grants the motion, and he almost certainly will, this means is that neither plaintiff (Ms. Hopkins or her company Hop Hop Productions) can file another lawsuit against the same defendants for the same legal causes of action based on the same facts. (That’s the “with prejudice” part.)
So is the #Cockygate closed? Will our sexy roosters now stay safely within the barnyard of alpha romance tales?
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: firstname.lastname@example.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:
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
Famed writer Ursula K. Le Guin published an essay on Book View Cafe called “Up the Amazon with the BS Machine.” ‘BS’ in this case stands for Best Seller, although I think that if it’s not also a clever play on the more typical meaning of “BS,” it should be. Her basic argument is that Amazon is to blame for the currently dominant model of mainstream publishing, which is to throw a bunch of books at the wall and see which ones stick to the Bestseller list, or at least sell strongly in a relatively short time after publication. The ones that don’t are quickly abandoned, going out of print. (And, if the work of first-time authors, often effectively torpedoing that author’s career.) You can read her essay, which I quite liked, here:
You can also see some discussion of the post on The Passive Voice:
While I agree with much of what Ms. Le Guin says (and would like to take this opportunity to thank her for the many wonderful books of hers I have enjoyed) I don’t quite understand why she thinks that Amazon’s model somehow encourages books to be abandoned. For many authors, Amazon is all about “the long tail.” Once published on Amazon, a book can stay there, if current trends continue, more or less forever. And it may find its audience months, or years, or theoretically even decades later. (Though obviously we don’t have decades of data on e-publishing.)
It is publishers who remove books from print. If I publish a book digitally, there it stays on Amazon until I take it down. If I publish one through CreateSpace, it will be available, in print, for either readers to buy directly or retailers to buy wholesale, until I take it down. Since reputable digital e-tailers don’t charge to make digital books available through their stores, there are very few reasons I can think of why any publisher would take a digital book “out of print.” And of the ones I can think of, exactly zero of them are in any way incentivized or encouraged by Amazon. If I’ve missed something, I would be glad to discuss it.
Leaving aside digital, the only way a book can go out of print is if the party responsible for printing it decides not to print any more copies. Since CreateSpace doesn’t do that (nor does Lightning Source or any of the other true Print On Demand providers) the concern only applies to traditional publishers. They have been (in)famous for playing games about when a book is or is not in print (and thus the rights might revert) for decades, although they certainly seem to have gotten worse about it in the relatively recent past. I respectfully suggest that if Ms. Le Guin is concerned with the current business model of traditional publishing – “print, push, punt,” to coin a phrase – she should address her concerns to them, not to Amazon.