Trademark bullying is a pox on industries ranging from breweries to whatever over-priced junk Monster Cable is making this week. A trademark bully’s ostensible goal is to keep consumers from getting confused, but in reality there was never any chance of confusion, and all the bullies accomplish is to make their victims needlessly waste time, money, and resources either fighting a lawsuit or re-branding in compliance with the bullying.
And now an author has brought the practice to romance publishing.
— Jamila Jasper (@JamilaJasper) May 5, 2018
The above tweet includes a screensnap of an email that reads:
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.
Hopkins has a trademark both on the word “Cocky” as a stylized script and on the word itself (this is being misreported elsewhere). She has a series of romance novels about a pair of brothers with the last name Cocker, hence the connection to the word “cocky”.
This is trademark bullying, plain and simple, and it’s based on an incredibly weak argument.
While a lawyer will tell you that you can trademark common words, there has to be something unique about how you are using the word:
One example that I like to give to clients is that of Apple Inc., the famous computer and software manufacturer. The word “apple” is a very common word, and yet Apple Inc. had no problem trademarking the term “APPLE” for computers and computer programs. Nor did Apple Rubber Products, John Middleton Co., and Scholastic, Inc. All of those companies, and many others, own trademark rights to the single word “APPLE”.
Why was this allowed? Because the word “apple” is an arbitrary word when used in connection with the manufacture and sale of computers and computer programs, or tobacco products, or educational materials. That is, there is nothing about these products that relates to “apples”. Accordingly, the term “APPLE” is actually a pretty strong trademark, as is the case when you apply a completely arbitrary term (however common it may be) to promote your products or services.
The case would be much different if someone wanted to get a trademark on the word “APPLE” in connection with the sale of apples (the fruit). In that case, the name “APPLE” would simply be a generic term for the type of goods being provided, namely, apples. Because of this, the United States Patent and Trademark Office (USPTO) would never issue a federal trademark registration for the term “APPLE” if the only products being provided were fruit products, even the best trademark attorney wouldn’t be able to help you with that attempt.
“Cocky” is a descriptive term that was already in widespread use before Hopkins filed for her trademark (including in the title of dozens of romance novels). Her use is in no way unique, and there is no way a consumer could get confused because there is no way that the consumer could possibly think the word “Cocky” is a trademark for romance novels.
Edit: As David Vandergriff (a lawyer) explains over at The Passive Voice, the reason that prior works are important is that in trademark disputes, control of a mark goes to whoever used it first, not whoever registered it first. So Hopkins’s trademark is invalid because she was not the first to use the term.
But if consumers were going to get confused, there is an equal probability they would think that her books were part of one of the several series of romance titles that used the work “cocky” in the title (here’s one example).
And while we are on the topic, one of her two trademarks is probably invalid; it appears to rely on a font licensed from Creative Market under terms that said you can’t get a trademark (edit: the creator has confirmed this).
If it helps, the font she used for one of her trademarks appears to be Northwell Alt Regular from Creative Market. Their T&Cs specifically say you can’t trademark designs using items purchased from there. Did @SetSailStudios give special permission? #cockygate pic.twitter.com/eO8eWfgs7e
— Syki (@the_syki) May 5, 2018
This trademark is going to be voided in the first lawsuit, if not sooner. Mark Whipple, an IP attorney, has weighed in with a detailed explanation of how and why Hopkins is going to lose, and the Romance Writers of America is already taking statements and is getting ready to consult with an IP attorney.
Authors who have been threatened with legal action by #Faleena Hopkins can contact Carol Ritter ([email protected]) as the #RWA is now collecting info to talk to an IP lawyer. Spread the word! #romance #cocky #StopTheCockBlock #authors #writers
— Ashley Jade (@AJadeAuthor) May 5, 2018
Update: The story is still unfolding on Twitter:
— Romancing the Nope (@RomancingNope) May 6, 2018
Also, Hopkins is painting herself as the victim over on FB: