Don't Get 'Cocky': A Cautionary Trademark Tale For Authors

Romance author's aggressive trademark campaign could backfire.

They say “all’s fair in love and war”, but when it comes to romance and trademarks, you really need to choose your battles wisely. Recently, a district court judge in New York denied a motion for preliminary injunction seeking to prevent the publication of a number romance novels containing the word “cocky” based upon a dubious trademark registration for the term by another romance novelist. How this situation came to pass is an interesting story in and of itself, but it ultimately reads more like a cautionary tale of trademark protection and enforcement… and there is nothing romantic about it.

First, some background provides perspective. The romance genre is a very popular genre, and perhaps more than other areas of the publishing industry, romance novelists enjoy a remarkable bond with their readers. As a result, it should come as no surprise that the romance genre has a passionate and devoted readership. Unfortunately, this zeal seems to have spilled over regarding on what has become known as “Cockygate”

In September of 2017, a self-published author by the name of Faleena Hopkins (through Hop Hop Productions, Inc., a Delaware corporation in which she may or may not have an equity interest), filed federal trademark applications for the term “cocky” both in text form and as stylized script, ostensibly playing off of the names of characters in her romance novels (brothers with the last name “Cocker”) that are part of a series of works she has self-published, such as Cocky Senator and Cocky Cowboy to name a few). Although this term is a common one (and apparently has been used in previously published romance novels by others before these filings), the USPTO granted registrations for the text form and stylized versions of the trademarks on April 17, 2018 and May 1, 3018, respectively. Soon thereafter, romance authors using the term “cocky” in their works started receiving cease and desist letters from her to stop using the term “cocky” in their titles and works.

Trademarks are defined under the Lanham Act as follows:

[A]ny word, name, symbol, or device, or any combination thereof… used by a person, or… which a person has a bona fide intention to use in commerce to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.

15 U.S.C. § 1127.

Trademarks not only operate to distinguish the trademark owner’s goods or services from those of another, but also serve as source identifiers. Generic terms can never be trademarked for this very reason — they are so vague as to source that they cannot operate as a trademark. For terms that may overcome this hurdle, they need to be actively policed by the trademark owner so as to avoid becoming generic (i.e. “aspirin” and “cellophane”, to name a few).

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Just as seeking to capitalize on trademarking a trending term or phrase is generally not a good idea, authors seeking to federally register common words as trademarks need to think long and hard about whether doing so is practical and defensible:

Not All Titles Are Created Equal. When it comes to titles for individual works of authorship, they cannot be protected as a trademark because they are essentially descriptive of the underlying work — only titles for a series of original works can be subject to such protection because such titles have been interpreted to operate in a trademark sense. This appears to be the tactic taken by Ms. Hopkins for which she was granted the trademark registrations. That said, her mark is for “cocky”, but the term only covers a portion of the title for the series, thereby requiring a separate commercial impression apart from the complete title. As the trademark registrations are not yet incontestable, they remain highly vulnerable to attack on this ground.

Common Terms Can Cause Uncommon Problems. When common terms are used as trademarks, there are more than the usual descriptiveness issues to overcome. In many cases, such terms may have been previously used in the marketplace for similar products or services, making these uses senior to the registrant’s use and registration. Such commonly used terms are also weak by virtue of their commonality — in most cases, they must have acquired distinctiveness over time so that consumers identify such term(s) with the underlying goods or services. When a large number of other prior works are found to use the term, the distinctiveness of the underlying trademark is drawn into question. Given the vast number of previous romance novels (and series) using the term “cocky” prior to her filings and registrations, such weakness in the marks is readily apparent.

A Presumption of Validity Does Not Mean a Registration is Bulletproof. Before firing off cease and desist letters, a trademark owner needs to understand the underlying risks to the new registrations. Until a declaration of incontestability is accepted and acknowledged by the USPTO (something that cannot be filed any earlier than 5 years following registration), the registration remains vulnerable to cancellation on a number of grounds (including likelihood of confusion). Even if properly filed and such a declaration is accepted by the USPTO, certain grounds for cancellation always remain available (such as the trademark becoming generic). Losing the registration erases all presumption of validity (as well as constructive notice of the use and registration, automatic jurisdiction in federal court, and a number of other significant advantages enjoyed under federal trademark registrations), forcing the trademark owner to “prove-up” the trademark at common law in the event of a dispute. In the present case, these problems are coming to bear — a cancellation proceeding has been filed on these and other grounds by an attorney who is also a romance author, and from my perspective, he may have a decent chance of succeeding.

Look, I understand this author’s desire to protect her works and seeking to use trademarks as part of that strategy. When it comes to assessing potential trademarks and developing a protection and enforcement strategy, however, federal registrations do not immediately confer an unassailable “carte blanche” for enforcement (let alone such an aggressive approach). Care must be taken to review the intended trademarks with an eye towards viable protection and enforcement mechanisms that don’t jeopardize what you are trying to protect in the first place, and authors need to be especially careful. As for Ms. Hopkins, I am not familiar with her works or otherwise well versed in the romance genre, but with respect to her trademarks, I think there may be breakup happening in the near future.

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