Home » Trademark » Trademark Shenanigans: Weighing In On #Cockygate

Trademark Shenanigans: Weighing In On #Cockygate

10 May 2018

From Writer Beware:

If you’re a writer, and you hang out on Twitter and Facebook, you’ve probably heard about #cockygate.

If you haven’t….An author named Faleena Hopkins has registered two separate trademarks for the word “cocky”, which is used in all the titles of her multi-book romance series. One of the trademarks is a design mark (the word “cocky” in a stylized font, as seen above); the other is a word mark (just the word “cocky”). Both refer to “a series of downloadable e-books in the field of romance” and “a series of books in the field of romance.”

That description is significant. Because over the past week, Hopkins has begun threatening other romance writers who use “cocky” in their titles–even where those titles are not part of a series, or the word is not used in a series title–with legal action unless they re-title and re-publish their books.

. . . .

Note that neither of [Hopkins’ trademarks] is, for example, “a trademark on the word ‘COCKY’ as used in book titles.” The registrations cover a book series, and this is made evident if one looks at the 9-page specimen of use she submitted to the Trademark Office to support the registration: http://tsdr.uspto.gov/documentviewer?caseId=sn87604968&docId=ORC20180416120311#docIndex=9&page=1. Note that “Cocky” appears in each of the titles in a manner that connotes that the book is printed as part of the “Cocky”-brand book series. Indeed, without the fact the word is used as part of a book series, it is unlikely Hop Hop Productions [Hopkins’ company] could have obtained the registrations.

This is because–and this is critical–in order for a trademark to exist and be registrable and enforceable, it must perform a “source identification function.” Here, Hop Hop was able to convince the Trademark Office that it has, since June of 2016, used the word “Cocky” to indicate the SOURCE of a series of romance books, and thus it was able to get it registered. There likely had to be a series of books for Hop Hop to convince the Trademark Office that the word “Cocky” performed this source identification function—one book with “Cocky” in the title would likely not have been enough to convince the Trademark Office, especially given that Hop Hop has ostensibly used the mark for less than two years. Just like when people see “Harlequin” on a book, they think of Harlequin Enterprises as the SOURCE of that book because “Harlequin” indicates more than just a book title. It indicates the SOURCE. See http://tsdr.uspto.gov/documentviewer?caseId=sn72184920&docId=ORC20081030112630#docIndex=10&page=1.

Because source identification is necessary to create and register a trademark, in order for there to be trademark INFRINGEMENT, as Hop Hop has apparently alleged in certain cases, the allegedly infringing “thing” must also be performing a source identification function. Thus, not all uses of a word perform a source identification function, and if there is no such use, there likely can be no trademark infringement.

. . . .

Thus, if you have one book and it is titled, for example, “The Gardener was a Cocky Lad,” I invite you to ask: is your use of the word “cocky” performing a source identification function such that people would be confused into thinking that Hop Hop was the source of your book? Is it being used only in a classic fair use sense to describe the gardener in your story as cocky, as defined by Webster?

Link to the rest at Writer Beware and thanks to Rachel and others for the tip.

Trademark

18 Comments to “Trademark Shenanigans: Weighing In On #Cockygate”

  1. It gets worse. When this first broke, Amazon was taking down both books with “cocky” in the titles, and the word in the metadata, and “cocky” in REVIEWS. Yes. I’m usually okay with ‘Zon, but in this instance their shotgun (“we want the authors to work it out so we won’t stop taking down your books”) approach went way too far. As of this writing, it’s all on hold, but Suffering Cats.

    Secondly, the supposed trademark holder has been sending authors her own C&D letters rather than waiting for her attorney to do it. One of them claims (? erroneously? — IANAL) that all the infringing author’s royalties will be owed to her, plus damages, because of trademark trespass.

    Really? I’ve never heard of this but then they don’t let me out much.

    In brighter news, RWA has taken this on. They have access to topflight IP lawyers and I cannot wait to see what remedies they come up with. I suspect the putative owner of this trademark is in for a lot of hurt.

  2. There are various commenters who claim that the trademark holder’s usage of “Cocky” in the series name is very recent, and not part of her original series identifier, adding insult to injury. Amazon has also been removing reviews using “cocky”.

    Today, I understand that the RWA (Romance Writers of America) told its members that it has communicated with Amazon and gotten it to agree to stop disrupting books with “cocky” in the title (reinstating those it already screwed) and to suspend action until more discussions take place. RWA is acting as the representative of those who object to this “word grab”.

    If you know someone who is affected, I recommend contacting the RWA.

    “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

    Full info here: http://legalinspiration.com/?p=503#more-503

  3. To keep up with the latest on this, follow Kevin Kneupper on Twitter, the attorney who offered his services pro bono and now has several other attorneys who offered to lend a hand as well. And apparently now is looking into some issue in the UK having to do with trade marking the word “rebellion”. Anyway, worth a follow: https://twitter.com/kneupperwriter

  4. I think this has finally reached official ‘popcorn’ stage. 🙂

  5. Widdershins, I made popcorn yesterday and read everything I could about this case. Fun and games.

    I also thought about creating an eBook titled “Cocky, Cocky, Who’s the Pretty Boy? by Fatima Hope”.

    (no disrespect intended for anyone who owns that name but was closest I could think of relating to the intended author to get her attention)

    With a Cockatoo image on the cover. Or a bare chested male with a cockatoo on his shoulder. Then inside, lots of pictures of Cockatoos with or without bare chested males. Of course, it would be priced free and put in Romance category. 🙂

    Then sit back and wait for the “letter” to arrive. 🙂

  6. the other Diana

    I’ve never witnessed an author obliterating their career before. And so quickly too.

    It boggles the mind that her lawyer didn’t put a stop to this.

    It boggles the mind that her family didn’t step in and tell her to step back and assess the situation.

    Anyway, waiting for the TM to be revoked or whatever the term would be. I hear it’s going to take a few months. It’s a shame the USPTO didn’t do their due diligence and approved that word.

    • It definitely boggles the mind.

      As for the lawyer comment, I’m wondering if she has actually retained an attorney, versus just consulting with one. Because if that was the case, the firm would send the letters, not her. If that’s the case, there could be a clapback from the firm she’s claiming represents her for using their name to bully.

  7. the other Diana

    PG,

    Is it illegal for a “layman” to send a C&D letter? Or is it just bad form?

    I’m also wondering what the responsibilities of her (trademark IP) lawyer would be. Shouldn’t they have checked to make sure the term wasn’t already being used in a series? It seems this whole mess could have been avoided if her attorney had suggested she trademark Cocker Brothers of Atlanta (with or without the city name).

    • From comments about this on other forums, her lawyers (if she really has/had any) would never have suggested she send those letters out with ‘their’ name being mentioned.

      Had she gone through a lawyer, the lawyer would either have advised against it – or sent the C&D on their own letterhead.

      I said ‘had’ up there because there is a chance those lawyers are going to drop her and the problem she’s created. (Heck, they might even sue ‘her’ for dragging their names into this mess!)

      Hmm, word about this must be spreading, Amazon says all the popcorn is on back-order …

    • Not PG, but it might be considered “advice” if he answered.

      The general rule is that you can represent yourself in any original legal proceeding (US, I don’t know the law elsewhere). Pretty much you are only limited to professional representation with appeals of an original court ruling (this is instituted to save time and frustration for appeal courts, which only consider the legal issues of the case being appealed – not the evidence).

      That being said, it is incredibly stupid for a non-lawyer to self-represent. Some lawyers that I know are of the opinion that even a lawyer should get a lawyer when they are a principal in the matter. (Something like a doctor should never treat his or her own family members.)

      • Oh, I should say that a lawyer should get another lawyer for things not in the normal course of business. Things like writing your own contract for representation is in that normal course.

  8. From what I’ve read elsewhere, the stylized font that she used in her copyright registration is, per the T.o.S. of the company that designed, can’t be copyrighted.

    • It’s already copyrighted by the person who created it. He’s said that the font can’t be used to make trademarked items, and this is plainly spelled out in the TOU for the font.

  9. I’m confused on the timing of the trademark. Can she make this claim on titles with “cocky” for those with published works prior to the issuance of the trademark?

    • That’s one of ‘her’ problems, she can’t but she’s trying to.

    • IANAL – but, as I understand the law and precedent, she cannot enforce the trademark at all on single titles past or future, only on romance series. So far as romance series go, she has serious problems, because she is encroaching on a previously established common law (i.e., not officially registered, but just as valid) series trademark – “Cocky Cagefighter.”

      • From what I understand, she’s going after certain authors using the word “cocky”, far outside the boundary of her supposed trademark, both current and previous, but oddly none of the big name ones who used the term long before her. Selective enforcement of a trademark isn’t allowed.

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