Author has trademarked common word; threatening other authors over its use

Looks like a case where the trademark examiner could have done a bit more searching and found plenty of material out there. This author registered the word for use with a "series of books," which is permissible, even though the title of a single work is not protectable.

The registration is new enough that someone with standing could file a cancellation proceeding in the USPTO. I suppose you could argue the mark is merely descriptive and shouldn't have been allowed without secondary meaning. The potential problem is that descriptiveness is usually judged in accordance with the goods and services, and "cocky" is not descriptive for books.

I don't know whether anyone will succeed in canceling the registration or not, but I think trademark infringement should be limited to cases where someone is using the word for a series title. Also, the registration is for a stylized mark (a particular font). The registration won't be limited to that specific look--trademark protection is broader than that--but it will certainly be a consideration in any infringement action.

 

I've filed trademark claims with Amazon. In my cases, the marks have all be registered, though Amazon doesn't require that they are (though they say it helps). It's a simple web form where you provide information about the registration and identify the goods you claim are infringing.

In my experience, Amazon takes listings down and notifies the person who made the listing. I've never had anyone contest the notice so I'm not sure how they handle it if someone does.

 

We'll see how that goes. They might have some trouble with this.

 

I remember that happening.

 

I wouldn't say that as an absolute rule. If I wrote a book called "Harry Potter and the Trip to the Moon," I'm probably screwed even if it is a one-off. I haven't seen any case law on this, but if I were a judge I'd be inclined to enforce this mark rather narrowly. If this makes it to the TTAB or a court, it will be interesting to see the decision.

 

So standing is required?

That's going to be the tricky part with the Kevin K. filing, I think. He tried to establish that he has a legit interest, but it was a bit of a stretch - he might someday want to write a book with "Cocky" in the title... too bad he didn't connect with one of the authors who HAS been directly affected and work with her...

 

But as so many indie authors have said, it's not just about changing a cover/title. It's also about changing any advertising you have, building another "brand", chucking out all your swag and paying for more to be made, changing banners - on websites and roller banners used at book fairs, changing business cards, letter heads, mugs, keyrings, bookmarks ... There are more than twenty books out there that share the title of my book, (or a variation of it) but they've not come after me and I won't be going after them, you just don't do that, it would be like TM'ing your name and making everyone else with the same name, change theirs.

 

Yeah, you have to have standing, though in the case of oppositions or cancellation proceedings before the TTAB the standing requirement is generally interpreted a lot more leniently than in court.

 

I don't like this thread no mo... makes me feel stupid. LOL.

 

She's going after a particular pair of authors - she's basically saying that they copied her covers and are gaining traction because her fans are buying books that "look" like hers but not hers.

Makes not a jot of difference to her that her first cover was practically a carbon copy of the one she's claiming copied her, (even down to the font colours) and that she's actually changed it a number of times since then, and has added "The Cocky Series" as her books took off. I believe she has 18 in the series.

 

She has a bunch of posts on Quora (https://www.quora.com/profile/Faleena-Hopkins) in which she stresses how important it is to learn how others are marketing and follow their lead.

Like: "How? Study best sellers in your genre. STUDY THEM. The fonts. The layouts. The style." "In fact, I'd say studying the best sellers is the best way to begin. What are they doing that's working? Read their book descriptions. How did they capture the reader's attention?"

And, the ever-popular "You should absolutely let other writer's influence your work. Everything in the world is built on something before it."

Apparently she's all about borrowing ideas from other authors. But her ideas? They're HERS! Back off!

 

There have to be a lot of books with “cocky” in the title that predate her trademark filing.

 

Yup. And apparently Trademark in the US is based on first use rather than first registration. I mean, I think the best result would be if it was determined and announced that a single common word can't be trademarked for use in a title. But the FUNNIEST result would be if someone else claimed the trademark and made her change her titles.

 

Yes. A federal registration gives you certain rights nationwide, not just where you’re using the mark, but doesn’t allow you to shut down a prior user. The internet has made figuring out how extensive the rights of non-users are a little more difficult.

 

I sounded the alarm on Saturday after seeing my Twitter feed explode, but I don't think I put it in the best area of the forum.

https://www.writingforums.org/threads/author-begins-sending-c-d-letters-because-shes-trademarked-the-word-cocky.157702/

 

She’s had some of Tara Crescent’s books pulled.

Anne Rice has tweeted about the whole thing.

 

So f****** shity, there's a special place in hell for people like Miss Hopkins.

 

Y

yrs, you do all that, but why should you have to change a title and do it all again because some tit doesn’t understand the difference between trademarks and copyright and is trying “own” a word that’s been in general population since 1540??

 

I follow her son and fellow/co-author Christopher Rice, and he's been allllll over this. Someone even asked Chuck Tingle to write a book with "cocky" in the title, but he demurred.

 

You can get a trademark on a word that has been around. Nike was a Greek goddess and an Apple has been in the English language for a long time. But this author has serious problems with the validity of her mark and how she’s trying to enforce it.

 

If YouTube has taught us anything it's that people can abuse automated take down systems with disgusting amounts of impunity and power. All it takes it just saying "I own this!" to issue disruptive take downs of YouTube videos, greatly impairing the livelihood of the video's creators. Can't wait for this kind of stuff to make its way onto Amazon.