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?
I was flattered to be asked to appear on the “Deadman’s Tome” podcast recently. While the podcast is primarily oriented toward horror fans, the host, “Mr. Deadman,” ran across the #CockyGate saga on Twitter and wanted to discuss the general issue of registering simple words as trademarks for book series. We talked about what trademarks are, how they work. and what’s going on with the #CockyGate lawsuit and PTO process. We also talked about lootboxes and I displayed my utter inability to commit to a favorite horror movie. Check it out!
As always, thanks for reading!
As usual: I am an attorney, but nothing herein should be viewed as legal advice. I am writing on the basis of both known facts and allegations, and if those allegations are changed or proven incorrect my analysis would likely change as well. You should consult an attorney licensed in your jurisdiction and familiar with the relevant law before making legal decisions.
Faleena Hopkins, the protagonist (or antagonist, depending on your POV) of the “Cockygate” saga, which I addressed in this post, has taken her grievances to the Federal District Court for the Southern District of New York. (That’s the Federal District Court that covers New York City and its environs.) She has sued:
- Kevin Kneupper, the attorney who filed a Petition to Cancel her trademark registration for “COCKY”.
- Tara Crescent, an author who has published romance novels incorporating the word “Cocky” in their titles.
- Jennifer Watson, a publicist participating in the promotion of an anthology called “Cocktales” specifically set up to raise funds to help people who have incurred legal expenses related to the “COCKY” mark and similar sorts of marks. NOTE: Multiple persons have alleged that Ms. Watson was not involved in the creation and publication of the anthology, as I originally stated. Assuming they are correct, I regret the error.
The plaintiff has asked for a lot of things in her complaint. She wants the court to declare that her mark is valid. She wants a declaratory judgment that her mark isn’t infringing any mark of the defendants, or any other right of theirs, and an injunction to stop all the defendants from, essentially, harassing her about her mark and her use of it. She wants the people who are selling allegedly infringing books to stop it and to pay damages to her for doing it. As far as Kneupper, who hasn’t published any allegedly infringing books, she wants the court to order the USPTO to dismiss his Petition to Cancel her registration, with prejudice. (That means he can’t re-file it later, as opposed to a dismissal without prejudice, which means he could correct it and try again.) And, finally, she wants attorney’s fees from everybody.
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