It seems the romance writing world is in a tizzy about Faleena Hopkins who has trademarked the word cocky and demanded that all other authors delete the word from their titles and any trace of it inside their books, going as far as sending out legal letters to cease and desist. Not very endearing to her fellow authors is she? I’m not overly fond of the word myself. It’s not really a compliment to men in my way of thinking, but to each their own.
Ms. Hopkins does have the right to trademark the word cocky, but it can only be trademarked as a part of a series. She has no legal leg to stand on going after the word cocky in general. It would be like Apple Computers demanding that you no longer use the word apple in anything, not even to call an apple an apple. There is a difference between a copyright and a trademark. You cannot copyright words or phrases or even titles. In a trademark, you have to prove that the word or phrase is distinctive to your business. Novels in a series of romances would certainly fit that bill, but only as far as the series goes.
Also, those authors who have used the word cocky in titles previous to Ms. Hopkins gaining trademark rights to the word have a “common law” trademark, so they just have to prove they used it for a period of five years first. And if it’s a single title, it’s not considered a trademark, so therefore it’s not a trademark infringement. All very confusing, so do your research. This article is not considered legal advice by any means.
§ 2.41 Proof of distinctiveness under section 2(f).
(a) For a trademark or service mark—(1) Ownership of prior registration(s). In appropriate cases, ownership of one or more active prior registrations on the Principal Register or under the Trademark Act of 1905 of the same mark may be accepted as prima facie evidence of distinctiveness if the goods or services are sufficiently similar to the goods or services in the application; however, further evidence may be required. (2) Five years substantially exclusive and continuous use in commerce. In appropriate cases, if a trademark or service mark is said to have become distinctive of the applicant’s goods or services by reason of the applicant’s substantially exclusive and continuous use of the mark in commerce for the five years before the date on which the claim of distinctiveness is made, a showing by way -31- July 21, 2017 of verified statements in the application may be accepted as prima facie evidence of distinctiveness; however, further evidence may be required. (https://www.uspto.gov/sites/default/files/documents/trademark_rules_statutes_2017-7-21.pdf).
It seems Ms. Hopkins picked a weak trademark. In the end, it may cost her more money in legal fees to protect the trademark than it is worth. I suggest she cease and desist before she ceases and desists her way right out of gainful self-employment.
Strong v. Weak Marks In addition to selecting a mark that is not likely to be confused with any pre-existing marks, it is in your best interest to select a mark that is considered “strong” in a legal or trademark sense, i.e., a mark that will most easily allow you to prevent third-party use of your mark. Some marks are easier to protect than others and these are considered “strong” marks. On the other hand, if a mark is “weak,” it most likely is descriptive and others are already using it to describe their goods or services, making it difficult and costly to try to police and protect. Weak marks should be avoided; they simply do not have the same legal protections of a stronger and more distinctive mark.
Applicants often choose (frequently at the suggestion of marketing professionals) descriptive marks for their goods and/or services, believing that such marks reduce the need for expensive consumer education and advertising because consumers can immediately identify the product or service being offered directly from the mark. This approach, while perhaps logical marketing advice, often leads to marks that cannot be easily protected, i.e., to extremely weak trademark rights. That is, a descriptive mark may not be registrable or protectable against later users of identical or similar marks; therefore, adoption of a descriptive mark may end up costing more money in the long term, either due to higher costs to try to police and enforce such a mark, or because it may be legally necessary to stop using the descriptive mark and select a new mark. (https://www.uspto.gov/sites/default/files/documents/BasicFacts.pdf).
Authors and businesses need to stop being intimidated by such high-handed and high-minded people like Faleena Hopkins. That’s how she will win in the end. But I say Ms. Hopkins does not have a cocky leg to stand on. I don’t plan on purchasing any of her books. In fact, I would purchase 50 copies of “Fifty Shades of Grey” before I’d purchase even a sample of Ms. Hopkins’ cocky books. E. L. James may have gained success by writing smut, but she did so honestly.
For more on this cocky subject: Legal Inspiration!