Trademark Cock-up

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.

86 thoughts on “Trademark Cock-up”

  1. I wonder how many authors are thinking about doing the same thing Faleena did. I wouldn’t be surprised if someone from another genre would try this asinine thing and trademark the word “fairie” just because he/she can.

    • (not the same one! 😛 )

      With luck they’ll see how well Ms Cocky backfired and will get back to writing …

  2. Rose Bear is correct; a retired trademark lawyer says he has filed with U.S. Patent and Trademark Office two days ago, appealing to negate the ‘cocky’ author’s overly broad trademarks. His take is that the office which grants, is overwhelmed, understaffed, and sometimes matters are granted that ought not be. His plan is that at least three elements of ‘faleena’s’ claims are not supported by law as he sees it. As I understand it, he has taken the case pro bono.

    Another lawyer who is not an IP or trademark attorney [and who says so] had weighed in last week with an online critique of this situ, at length, which posited essentially the same points of illness in ‘faleena’s’ claims as the lawyer who prepared the document to attempt to undo the given trademarks.

    There are also two petitions online, one has 27,000+ signatures that authors from any genre can sign in solidarity.

    Ive now read two letters from “faleena’ sent to two of my author colleagues, and the letters to my .02, seem not written by a lawyer, but by a now-legally trained and non legally licensed person who doesnt understand a C and D and instead has added threats and intimidation.

    There is the legal issue of appropriation of someone else’s font creation by ‘faleena’, seemingly wrongly trademarked without permission, by ‘faleena’ {I use semi quotes because I just now see she has more than one name and not sure which one is the given]

    It will remain to be seen if ‘faleena’ has been taken down the pike by some unscrupulous lawyer who told her, for moolah, ‘this is the way to grab claims’… that put her in such an untoward situ of attempting to slay what were, sleeping dragons, that is authors at peace and just doing their writings and publishings.

    Im also waiting to hear what caused all this to come on for ‘faleena.’ What breach or insult, or walking away with her work, or theft of her works, in reality, and as an actual violation of her copyrightable works…. occurred to bring on such draconian measures.

    To my very .02, I wonder if single words trademarked, become an asset that can be sold to others, so that one begins with ® to have the same slime that goes on with domain names, wherein greedsters look at newest book titles, take those domain names and try to sell a 9.99 a year item back to author for thousands of dollars.

    That would not be good reR’s, and isnt w domain names either.

  3. I just got a copyright and trademark for the words “Faleena Hopkins” and will sue any author who uses that name.

  4. Trademark law is wonderfully strange. For example, there are TWO DIFFERENT BEERS named “Budweiser”; the breweries that make them spent quite a while suing each other over the name before they agreed to divide ownership world-wide by countries.

    So, in the US we get Budweiser, “The King of Beer”. This is the beer known as “Bud” in Europe.
    In Europe, they get Budweiser, “The Beer of Kings”. This is the beer known as “Budvar” in the US.

    The European brewer (Cesky Budovice, I think) has been using the name much MUCH longer than the US brewer (as in “centuries longer…”). But the European brewer didn’t export to the US until decades after the US brewer started using the name.

    As always, I am not a lawyer nor do I play one on TV. If you need legal analysis on which you may rely, you should hire your own lawyer rather than listen to some guy on the Internet. Your mileage may vary. [Insert generic disclaimer here.]

  5. One thing worth mentioning here is that (at least as far as I understand U.S. trademark law) trademark owners are *required* to do the kinds of things Ms. Hopkins is doing, or else risk forfeiting said copyright. By being granted a trademark, you’re basically legally compelled to act like an asshat and annoy anyone who may seem to be infringing.

    Owning a trademark for a common word is quite possibly the best way in the world to get bad PR.

    • Especially when it’s a word so commonly used you don’t actually own it.

      It’s not as she’s claiming to own…

      …Supercalifragilisticexpialidocious!

      Or even Kryptonite.

    • “forfeiting said copyright”

      You can’t forfeit a copyright.

      A trademark (which is a whole different thing, handled by a whole different office of the government) can be genericized if infringement is not challenged. That does not, however, compel someone to act like an asshat. Most people, and even many companies, in fact, are rather polite about it.

      Though one notable exception was the Putt-Putt golf people, who sent a nastygram to Mojang because, apparently, some random Minecraft user had used Minecraft (which, if you don’t know, is basically a computer set of building blocks) to build a virtual golf course, which he apparently called “Putt-Putt Golf,” and apparently put a video of his little game avatar playing golf on it or something on YouTube. For those who aren’t up on the details, what Putt-Putt did was basically the equivalent of going after Xerox because someone photocopied your book on a copier they made, or going after Microsoft because someone typed out your stuff with Word. I.e., it’s a “richard” move. Mojang’s response, by the way, was to laugh in their faces. They apparently slunk away in shame, because nothing further was heard about it.

      Some years ago, I had a trademark — my company name — and it turned out that another company, in Canada, had the same name, naturally registered in Canada and, like mine, a common-law trademark in the US. I emailed them. We chatted. We agreed that our products, while in the same industry, were so dissimilar, with such different markets, that it was highly unlikely either of us would be confused for the other. We both put “If you’re looking for the other (name), click here” on our websites, we forwarded the occasional stray email (which amounted to about one a year), and when I closed down, I gave them a heads-up so they could pick up my domain name when it expired, as it happened that I had the name of both of our businesses.

      That’s how civilized people do it. Faleena Hopkins is clearly not a civilized person. Her books are more readily distinguishable from other books with “Cocky” in the title than the other company’s products were from mine, simply because someone who is trying to buy (or avoid!) one of her books need only look at the author’s name to be sure they’re getting the right one. There is no possibility of confusion.

      And no, trademark owners are not required — or even permitted — to do the sort of thing Faleena Hopkins is doing. The “…for Dummies” series is, I believe, covered by a trademark, but Wiley doesn’t — because, unlike Ms. Hopkins, they have clueful lawyers and they listen to them — threaten and intimidate any author who uses “dummies” in a title. So “Divorce Is NOT For Dummies”, “You’re A Business Owner Not A Dummy”, etc., and dozens more, are all on the market. If someone published “Blog Posting For Dummies” they might be told to stop (especially if the covers resembled Wiley’s trade dress), but “Personal Finance For Smarties, Not Dummies” is fine, because there’s absolutely no confusion about whether it’s part of their series or where it comes from.

      So, yeah, no. There’s no legal requirement to be an asshat, or even anything close.

      • In fairness to me, I mis-typed. I wrote copyright when I meant to write trademark… which is a shame because I often find *myself* correcting people when they mistakenly use them interchangeably. I should probably do a better job of proofreading prior to clicking Submit.

        That said, I still stand by the thrust of my comment, hyperbolic as it may read. You’re still required to defend your trademark… particularly against legitimate cases where there’s a possibility of brand confusion. The classic examples of this are Xerox and Kleenex.

        Yes, there are polite, civilized ways of handling this. However, for some people just being notified of a potential naming collision is annoying and qualifies as asshattery.

        I’m not saying she’s handled it correctly. What’s happened here is the equivalent of being told you have to clean your room and you set it on fire. That doesn’t change the fact that you still had to clean your room.

        • There’s a difference, though, between being politely notified about an inadvertent trademark violation and over-reacting, and the trademark owner being rude, abusive, and using their trademark to intimidate competitors instead of identifying their own products. It’s defense of a trademark versus attack with a trademark. The problem here isn’t that someone with a legitimate trademark notified an infringer about a violation and the infringer flipped out. The problem is that it’s the purported trademark owner who’s doing the flipping out, and going far beyond notification into legal threats.

          For example, here’s what a real letter from a totally clueless trademark owner looks like:

          https://imgur.com/a/molzg

          Yeah, that’s Putt-Putt, who may have set a record for utter trademark cluelessness — as someone said, Minecraft no more contains Putt-Putt’s trademarks than a box of crayons contains Disney’s. You’ll note, though, the differences between that and Faleena Hopkins’ apparently self-written C&D. It sets out what the problem is, and what the remedies should be, and why. “Reasonable royalties” instead of “all the monies you have earned” etc.

          It’s actually not being told you have to clean your room and you set it on fire; it’s more like being told you have to clean your room by someone who may not actually have the authority to tell you to do so, when your room is already clean, with them threatening to set it on fire if you don’t, and them doing the same to a few other people and their rooms, as well as locking those people out of their rooms without any notice at all.

          • I think you’re getting the impression that I’m disagreeing with you. I’m not.

            And, for what it’s worth, the room on fire metaphor wasn’t meant to be from the infringer’s perspective.

  6. Ever since the mouse bought LucasArts, I’ve been wondering how long before the C&D letters started going out to amateur fan-works of Jedi Lightsaber duels in traffic.

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