Trademark Cock-up

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PG has received several questions about a female author named Faleena Hopkins who has apparently obtained a U.S. trademark registration for the word, “Cocky” as used in connection with romance novels.

Evidently, Ms. Hopkins has been threatening other authors with claims of trademark infringement for their use of the word, Cocky, in titles and as names for their characters.

Here’s the text of an email Ms. Hopkins has reportedly sent to another romance author per a post by Nate Hoffhelder on The Digital Reader:

Hi Jamilla,

My name is Faleena Hopkins, author of Cocker Brothers, The Cocky Series,

The Federal Trademark Commission has granted me the official registered trademark of the word/mark “Cocky”, no matter the font.

Trademark Registration number: 5447836

I am writing to you out of professional respect so that you may rename your book “Cocky Cowboy” which shares the same title as my book, and republish all of the versions (ebook, paperback, and Audible) on Amazon to keep your ratings and money earned.

My attorney at Morris Yom Entertainment Law 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.

I will do that – but I would rather give you the option.

I have had this series established since June 16, 2016 and I take all of the hard work I put into establishing it very seriously.

Your hard work I also take seriously.

You have the opportunity to adjust, rename, and republish before taking further action. You can do so on Amazon without losing reviews.

Thank you,

Faleena Hopkins

PG does not practice trademark law, but somewhere in the back of his mind, a memory stirred. He has done a little quick and dirty research which appears to have confirmed that memory.

First, the obligatory disclaimer: PG is a lawyer, but he is not your lawyer. You obtain legal representation by hiring a lawyer, not reading a blog post, whether created by a lawyer or not. PG is not planning to start practicing trademark law and, if he did, he would do much more than quick and dirty internet research before issuing an opinion about trademark law.

If you can imagine any more disclaimer language, please feel free to include it in a comment so PG can add it to his disclaimer.

Now that everyone is thoroughly disclaimed, here’s the little memory that stirred in PG’s mind:

In some jurisdictions based upon English common law – Great Britain (of course), Ireland and the United States – a hardy entrepreneur could obtain a common law trademark. The entrepreneur obtained this trademark by using it in connection with goods and services sold by him/her. If you marketed your ale as Mangy Dog Ale on a regular basis and Mangy Dog Ale became associated with the refreshment you produced, you had an enforceable trademark. If a brewer in a neighboring village started calling his/her ale Mangy Dog Ale, you could make him/her stop using your trademark.

No government registration was required to obtain a common law trademark to the name you chose and used. If your competitor said he/she should be able to use the trademark, the answer to a simple question decided the issue – “Who used the trademark first?”

In some jurisdictions that have not built their legal systems on the foundation of the English common law, the owner of a trademark is the first person to file for the trademark. These systems are often called first-to-file systems.

Here are some quotes from various trademark attorneys on the first-to-use vs. first-to-file question in the US:

From Tyler Hampy of Widerman Malik:

In the United States, it is not registration, but actual use of a designation as a mark that creates rights and priority over others. Thus, the rule is that ownership of a mark goes to the first-to-use, not the first-to-file.

That being said, trademark ownership is not acquired by federal or state registration, although registration is absolutely beneficial. Ownership rights flow from prior use, either actual or constructive. As the Federal Circuit observed: “[t]he requirements of both adoption and use devolve from the common law; trademark rights in the United States are acquired by such adoption and use, not by registration.” Therefore, even if you had a trademark registration and it was later cancelled, the underlying common law rights in a mark continue.

To acquire ownership of a trademark, it is not enough to have invented the mark first or even to have registered it first; the party claiming ownership must have been the first to actually use the mark in commerce. Therefore, a party pursuing a trademark claim must meet a threshold “use in commerce” requirement.

The term “use in commerce” means the bona fide use of a mark in the ordinary course of trade. The use must be more than merely to reserve a right in a mark. Trademark protection is granted only to marks that are used to identify and to distinguish goods or services in commerce, which typically occurs when a mark is used in conjunction with the actual sale of goods or services.

From Keith A. Barritt of Fish & Richardson:

It is commonly assumed that once a federal trademark registration is obtained it confers the exclusive right to use the mark on particular goods or services and can readily prevent use by any other party. Indeed, the Trademark Act appears to say precisely that. However, trademark law is not quite so easy, and in fact having a trademark registration – even a valid and “incontestable” one – does not guarantee the exclusive right to use the mark in all circumstances.

Unlike many countries, the United States confers trademark rights by use of the mark. At the outset, trademark “registration” is little more than a formal acknowledgement of rights already in existence. This contrasts sharply with patents, which actually grant substantive rights the patentee otherwise would never have.

. . . .

If a prior user sold goods bearing the mark in an area prior to use in that area by the owner of an incontestable registration and prior to the registration date, the prior user would have superior rights and could in fact block the registrant’s use of the mark in that area. A prior user could even be the prior user nationwide, and thereby be entitled to block a registrant’s use of the mark throughout the entire country.

From Brian Hall of Traverse Legal, PLC:

Today I will be looking at the issue of the difference between the first to file rules and the first to use rules as it pertains to trademark rights.  This is a common question that I get, “Is it enough that I was the first to file for trademark registration in the United States?”  Put another way, “Does it give me the rights that I want?”  And the short answer is no.

Within the United States, it is the first to use who has rights in a trademark.  The reason this becomes important is because people tend to go to the United States Patent and Trademark Office or USPTO database and look up registered trademarks or even applied for trademarks to determine who has rights in that particular mark.

While that’s a good start, it’s not entirely complete.  And the reason being, is that the United States follows the first to use rule under trademark law.  What that means is that the first entity to make a valid use in commerce of the particular mark is the one that has rights.  This is because under common law, as opposed to statutory law, the first to use is the one that gets the rights to use it moving forward, even if they do not pursue a trademark registration.  This doesn’t mean that one should avoid getting a trademark registered with the USPTO.  But what it does mean is that if you determine that someone has applied for or registered a trademark with the USPTO, and you believe you were the first to use it, you may have actions that you can take to further establish your rights.  You might be able to file what’s known as a cancellation proceeding in front of the TTAB or you may jump right to litigation.

From B. Brett Heavner and Marcus H.H. Luepke of Finnegan:

Under U.S. trademark law, being the first to file an application to register a trademark does not guaranty priority to the applicant. In general, under U.S. common law it is the date on which a mark was first used by its owner in the United States that decides the right of priority, irrespective of whether the mark is ever registered in the U.S. Trademark Office. Unlike other jurisdictions, mere use of an unregistered common law mark in the United States gives the user territorial priority trademark rights even without requiring a certain level of notoriety. Such earlier use establishes a right of priority even over a later-filed U.S. application to register a similar mark if the first use of the mark of the application was commenced after the prior first use of the unregistered common law mark.

. . . .

[F]oreign applicants sometimes adopt a mark knowing it was already in use in the United States by another party under the mistaken belief that the mark must be registered with the U.S. Trademark Office for that party to have trademark rights. After confirming that the other party had failed to apply for a registration, these foreign applicants commonly believe that they are safe to launch their product in the United States by being the first to apply for a U.S. registration.

Unfortunately, such foreign applicants often receive cease and desist letters from the prior user and only then learn that they cannot successfully rely upon their application filing date due to the other party’s prior common law use, and must therefore cease use of their mark in the United States. Under U.S. trademark law, actual knowledge of another party’s prior use can even lead to claims for willful trademark infringement and liability for treble damages.

PG says you can Google other statements of the First to Use trademark principles to your heart’s delight by searching on trademark “first to use”

Or you can search Amazon books for the word, “Cocky” in a title to see when they were first published.

Ms. Hopkins’ trademark registration, number: 5447836, helpfully provides the information that she first used the mark, “Cocky”, on June 16, 2016. If authors were using the mark, “Cocky”, prior to that date, they might be the rightful owners of the trademark.

Several online discussions of Ms. Hopkins’ trademark mentioned that RWA was planning to look into the matter.

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86 thoughts on “Trademark Cock-up”

  1. And another development: it seems a lawyer/author/screenwriter has filed a petition with the Trademark Trial and Appeal Board to cancel Ms. Hopkins’ “cocky” trademark.

    I’m no lawyer, but he put a (lightly) redacted copy of a really official-looking document on Twitter, and, reading though it, it looks like a pretty thorough beat-down of Ms. Hopkins’ maneuvers. The document is here for your edification and delectation.

    Full disclosure: I think I met with this lawyer a few years ago on a completely unrelated IP issue. Not an endorsement, he didn’t represent me in any way (was just asking a question). Simply noting an odd coincidence …

  2. It’s been interesting to watch this brouhaha erupt all over social media.

    In my attorney years I was a Trademark Examiner at the U.S. Patent and Trademark Office in D.C. From what I’ve read so far, it seems that this case may educate a lot of writers about trademark rights and the registration process, while possibly clarifying some legal issues relating to indie entrepreneurs.

    If I were the author in question, I wouldn’t get too cocky.

    • After reading a few comments about Amazon’s attitude toward trademarked/copyrighted items, when this conflict is all said and done (and I think it’ll be said and done Real Quick-Like) I think we indie authors should rethink our attitudes toward rigorous registration of our works …

    • Nice. So if it’s not in that font she’s SOL as a trademark hit.

      Sadly the comments over there say Amazon has taken ‘down’ some of the books she claimed to them are trademark infringing …

  6. Just made contact with my friend Sara Forbes who says she was contacted by Faleena THIS MORNING. So Faleena’s not backing down one iota. If anyone wants to show their support by buying a book, I’m sure Sara would appreciate it.

  7. Along the same lines, I was contacted about a year or so ago by someone who trademarked the word “authorpreneur” even though it was obvious she was not anywhere near the first person to use it. She asked me to take down articles on my site with the word in it. Since they all predated her registration, I just ignored the email, but wondered if it was enforceable.

  8. Lane Hart used in a series first. They’re mentioned in a comment above.

    And yes, specifically she’s tm’d the word for use in regards to a series, but she isn’t letting that stop her from targeting other authors who have used it on standalones. She’s falsely claiming that she can sue for all monies made on a book, stand-alone, that has the word Cocky in the title. Unless the author removes it immediately. She sent this AFTER reporting the book to amazon for removal.

  9. This is super interesting, but if all the earlier uses of “cocky” in romance were in individual books’ titles, not series titles, does the “first to use” rule really undercut her claim? “I’m the first to use it as a series title” would be the go-to defense, right?

    • But the word still has no uniqueness in use in the books she’s writing and titling with “Cocky.” From what I understand (as per Nate’s post on The Digital Reader), the word “Cocky” would have to be associated with something completely unrelated to it (as in Apple Computers and apples, the fruit, again, from Nate’s post). If she was attempting to trademark “Cocky” in relation to something other than romance novels, that relationship would be unique enough to enable her to trademark “Cocky” for it. But Cocky (and its various other forms) have long been associated with the romance genre, and it doesn’t matter if she’s tradmarking the word in relation to a series, even if it hasn’t been used as a series title before, because of it’s preexistent common usage in the romance genre. As PG has explained, here in the US, there’s a “first use” policy to our trademark system. So, if anybody has a right to send out cease and desist letters and “change your title or else” notices, it would be the first author to have used Cocky in their romance novel, not dear, sweet Faleena.

    • I see what you’re saying, but here is the thing, her series title is The Cocker Brothers of Atlanta, or The Steamy Series. Her titles start with Cocky. Which I believe some of them actually copy previously released Cocky books.

      So, in all actuality, she TM’d the word Cocky for no reason, other than to keep others from using it.

    • But in the example above she’s going after any ‘cocky’ titles – not just those in/part of a series.

      • Yeah, I know. From my total layperson’s perspective, it seems like a pretty major loophole in trademark law: you’re not allowed to trademark individual works’ titles … except you sort of are, so long as you pursue that goal through a series title. 🙁

        ETA: Or maybe the courts will say no. Fingers crossed.

    • See RoseBear’s comment above in reply to mine. Dear Faleena is out of luck on that one, too. (“Cocky Cagefighter” series.) Oh, and THANK YOU, RB – I have a very short attention span for beefcake covers. Yes, that is my excuse.

      I would also note that all of us that are writers, whatever our genre(s) are, should hope that a very firm example is made of this person. As other commenters have said, here and elsewhere, this kind of extortionate behavior is not by any means unique to the romance genre.

      • I saw the Cocky Cagefighter series mentioned on Fb after posting here. So, the first-to-use situation is pretty completely covered …

        I agree about the larger implications. So many series titles are structured around a recurring word. If authors and publishing companies start pursuing this kind of trademark en masse, the number of words that made unavailable for titles could be great.

  10. Stuff like what? Filing for a trademark you can’t possibly keep? Those silly romance girls aren’t even the first to attempt it.

    Try Tim Langdell and his TM for “edge” or Games Workshop with “space marine.” You can’t take the romance genre seriously for doing something a bunch of men in other fields have already tried???

    #cockygate is the action of one person, and you cannot paint her entire genre in a similar light. Nor should her actions tar the rest of us. This has nothing to do with the romance genre and everything to do with greedy, opportunistic jerks.

      • Ever wondered why their TV box is called “Apple TV” and not “iTV”? It’s because a little British broadcaster called Independent Television got there 50 years before them 🙂

        • A trademark hard to ignore, as they made some truly classic shows in the 60’s.
          The Avengers are best known but I personally found The Champions more inspiring, Diana Rigg notwithstanding.
          Telepath secret agents?
          What’s not to like?

            • Or that nobody has thought to revive it?
              Talk about wasted opportunity.

              The stories just write themselves; the premise and team composition set everything up beautifully. Internal tension? Check; the brit and the American don’t trust each other.
              Romantic tension? Career focused young widow, two overprotective young males. Check.
              External tension? Paranoid Agency bosses wonder how his adhoc team is so unusually effective. Might they be double agents? They tortured one of them!

              Even with the limited budget the Spooner and co came up with a pretty good show with a season arc, to boot.

              Maybe some day…

              Too bad the copyright has years and years to go.

              (Randall and Hopkirk is also worth a modern reboot.)

      • So what, Joe? Got a problem with sexual context? Stop shaming people. It’s not a good look.

      • Just saying what? Joe, you’ve always been bitter about things that sell since you do not. Thus why you’re only allowed to post on PV and nowhere else for the most part. I’m sure you’re taking so much glee in all of this, but don’t lie to yourself and say this is just a romance thing and no one takes romance seriously anymore. Say what you mean! “This is why no one takes women seriously anymore.” At least have the guts.

        • Joe, you’ve always been bitter about things that sell since you do not.

          Not true. On both counts.

          Thus why you’re only allowed to post on PV and nowhere else for the most part.

          Also not true. I was banned from KBoards for standing up to a mob of crybullies, but that’s just about it. The truth is that I’ve cut out social media from my life and spend a lot less time on internet forums than I used to. Instead, I spend most of my time writing, reading, and improving myself.

          I will point out that when I do join an internet community, I have the courage to post under my real name. If you are who I think you are, your claim that I’m “only allowed to post on PV and nowhere else” is the pot calling the kettle black.

          I’m sure you’re taking so much glee in all of this,

          Not at all. Romance is a fantastic genre, and has produced some truly outstanding literature. Louis McMaster Bujold is one of my favorite authors, and I have great admiration for Jane Austen as well.

          don’t lie to yourself and say this is just a romance thing and no one takes romance seriously anymore.

          I’m not saying that it is, or that they should. You’d make a lot more friends if you didn’t assume people’s motivation or put words into their mouth.

          Say what you mean!

          Very well. This whole thing is totally ridiculous, all the more so because the offending word at the center of it all is “cocky.” I have no idea why anyone would think that this was a hill worth dying on, and I suspect that many romance writers are equally perplexed.

          “This is why no one takes women seriously anymore.”

          Not at all. There are many great and intelligent women who write romance, and Faleena Hopkins is doing them a great disservice.

          • Have you ever heard the saying that if you give someone an inch, they’ll take a mile?
            This seems to be the case here, ccocky might seem to be a silly hill to die on but if the trademark passes, what’s to stop people from trademarking words like Duke, or cowboy in romance.
            And what then is to stop them from moving into other genres?
            And really, why should a person be able to own a word which has been use since the 16th century, long before its sexual connotation and could mean something completely different in the future.

      • I happen to think the use of Cocky and Cockers is silly, but I’m not her reading audience. She knows what she’s doing, giving the clue to the readers who want what she offers. Clearly, THEY like it, since she has lots of good reviews and has been selling. My issue is only with her adjective-grabbing, author-bullying ploys. She can call her next series the Tallywacker Triplets of Johnson Lane for all I care.

    • might have to argue that foxy loxie and cocky locky are romance… does animal romance count and why not

      JUST kidding

    • As Sariah mentioned below, this kind of overstepping isn’t solely confined to romance. Games Workshop tried with ‘space marine.’ ASK ME HOW THAT WENT.

      *thousand yard stare*

    • Personally, I don’t much care who takes the genre seriously so long as I keep making money from it.
      I don’t think E L James particularly cares either, though if we’re looking for seriousness, perhaps the fact that the Romance genre is the largest selling genre with the most voracious readership should tell people that these are books others want to read, regardless of what our moral betters claim to say.

      • Actually, I’ve seen signs that the mystery genre is outpacing romance. One of the signs is the data Bookbub has shared. They also charge more for mystery than for romance.

      • Fair enough.

        I’m not saying that Romance shouldn’t be taken seriously—not at all. Louis McMaster Bujold is one of my favorite authors, and I enjoy Jane Austen as well. Just that when the average lay-person hears about #cockygate, or whatever they’re calling it, their mind goes straight to the gutter.

        I think Faleena Hopkins has done Romance writers a great disservice.

    • Really? I think it’s great that there is solidarity among the romance authors–and speedily so–to address someone being a bully to other romance authors. They’re supporting the victims and calling out the aggressor, and saying, “You’re out of line. Apologize and stop being a %$^&&.”

  13. some fAVS out of the humongous many books pub’d in past w cocky in them, many of them children’s books…in just brief research….

    gonna take the author who wants to chase people with ‘cocky’ in their title, a lifetime, as they go back into 20th century and prob farther back than that…

    {also might note if relevant, ‘cock’ has at least five meanings, all different from one another. Only one kind implies overconfident

    Cocky: Webster’s Quotations, Facts and Phrases Jul 30, 2010

    Cookin’ With Cocky II: More Than Just a Cookbook Aug 20, 2006

    Cocky Cactus,1946

    Cocky, the Little Helicopter 1943

    Cocky Locky, Ducky Daddles, Goosie Poosie, Turkey Lurkey, and Foxy Loxy Hardcover – 1919

    • If I recall correctly from the sources I’ve read, she trademarked “Cocky’s” use specifically in romances.

      Either way, she’s going to have a hell of a time getting trad and small publishers to change the use of “cocky” on titles they’ve put out. I suspect, if Randy Penguin really is looking into the issue (as RoseBear indicated), and that goliath decides to step in, poor, poor, unfortunate little Faleena is going to be crushed by PRH’s legal department.

      (PG, I tried logging in, but it said I’m temporarily locked out.)

      • Then we get to define ‘in romances’. 😉

        As in if she gets away with it in general romances I can see her trying to branch out into anything even remotely ‘romantic’ like far to many space operas …

      • …Unless Penquin decides they want to play a game similar to that of Patent Trolls, and sign her, and use her to prevent some of the competition.

  15. Oh, it’s getting riper by the moment.

    Apparently, the Randy Penguin is rumored to be taking an interest in this matter.

    Also, and this is not rumor, RWA is investigating this issue, and asks that people who have been contacted by Faleena or her representatives should notify Carol Ritter (carol.ritter@rwa.org).

    A well-known FB group, popular with indie authors, has closed comments for the weekend. And, I believe, they have somehow disappeared all the commentary on this issue.

    It’s amazing, to me, that the author in question would so willfully — almost gleefully — smear her own reputation in this manner. I hope someone loves me enough to keep me from damaging myself this way …

    • Actually, someone stated this “author” is also an actress. I wouldn’t doubt this is nothing but a publicity ploy to get her name out into the major media…

      • She has an entry in IMDB. I’m not sure if it’s reality, although the name does appear in each movie’s listing. After reading up on how to add yourself to IMDB, I am not entirely sure she really did appear in any of those movies (and I’m not tracking them down to look…)

        Her bio on that site is an amazing monument to Narcissus.

        I wonder if she has any idea what she’s done with this whole episode.Talk about tying yourself to a nuke…

        Narcissus

        https://www.imdb.com/name/nm0394162

  17. In another interesting development, it seems that she didn’t have the right to trademark the word “cocky” in the font she has been using. The creator of the font is looking into this now.

    Popcorn, anyone?

  18. Lol PG, my standard internet disclaimer includes, “This is general discussion only, if you want to know what to do on your case you have to hire an attorney (not me). I’m just pondering here, nothing more.”

  19. Grumble, grumble, make us do our own work…

    “Cocky Bastard” – published August 15, 2015.

    Other places have noted that dear Faleena may have just opened herself up to an infringement lawsuit in the UK – she is not the holder of a commercial license for the font she uses on the covers. From what I understand, British law is rather more severe in copyright cases.

    • Actually, the list of books on Amazon with the word “Cocky” in the title that predates Faleena’s first offering is more like this:

      January 30, 2011: A Little Bit Cocky by Vee Michaels
      March 11, 2014: Cocky Ballsboa by Dionysus K
      December 13, 2014: Cocky Cowboys by J.T. Riggs
      July 7, 2015: Jax – A Cocky Cage Fighter Novel by Lane Hart
      May 16, 2015: My Cocky Stepbrother by Claire Sutcliffe
      July 5, 2015: Cocky Dominant Twin Stepbrothers by Claire Sutcliffe
      August 8, 2015: Cocky by Gary Gray
      August 12, 2015: Cocky by Kaylee Kazarian
      August 15, 2015: Jude – A Cocky Cage Fighter Novel by Lane Hart
      August 15, 2015: Cocky Bastard by Penelope Ward and Vi Keeland
      August 17, 2015: Cocky by Mia Carson
      September 15, 2015: Her Cocky New Cowboy by Susanne Lewis
      September 17, 2015: Cocky Bastard by Raven Stream
      September 23, 2015: Cocky Bastard by Ela James
      November 23, 2015: Cocky Stepbrother by Emily Guzman
      January 3, 2016: My Extremely Hot Stepbrother (A Cocky Billionaire Romance)
      January 16, 2016: Linc – A Cocky Cage Fighter Novel by Lane Hart
      March 12, 2016: Mace – A Cocky Cage Fighter Novel by Lane Hart
      March 28, 2016: Cocky Prince by Jules Barnard
      April 23, 2016: Cocky F@#ker by Misti Murphy
      June 18, 2016: Senn – A Cocky Cage Fighter Novel by Lane Hart

      • And the five ‘A Cocky Cage Fighter Novel by Lane Hart’ might even be a series … 😉

        Me thinks she’s bitten off more a bit more ‘cockiness’ than she can chew at this point, because her legal fees are about to outstrip anything she’s ever dreamed of …

      • Well, it only needs one example, in my opinion.

        However – you dug on down and found the predecessor “Cocky Cagefighter” series. Apparently, that makes a difference when you head off to court. (It only takes two to create a series.)

        So, good work!

    • Well, she did one of the authors she targeted a huge favor, ironically. Her retitled “cocky” book is #216 in Kindle Store. New book. Not famous author. And probably will go higher given the support she’s getting from Romancelandia. BACKFIRE..huge backfire.

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