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:
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.
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.