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

I think it’s got a lot to do with changes in society.

 

Just further goes to underscore that readers of popular fiction don't give two figs about the kinds of things we obsess about on writing forums. If you can keep them entertained, you're going to find an audience and sell, whether you can write well or not. Faleena is bad enough that maybe she's an outlier, but I kind of doubt it.

 

Yes. I like that analogy.

 

I think my favourite line from the judge is: how can you trademark the word "cocky"?

 

I don't think this is completely true.

I agree with the first part, more or less - that a lot of readers don't care about the stuff writers care about. (I'd offer the caveat that a lot of what we care about is the stuff that contributes to readers being entertained... characterization and pacing and setting and the rest of it.)

But I don't really agree with the second part. I think there are lots of writers who create entertaining writing who nevertheless don't find a market and don't sell well. If you can keep readers entertained and if you can figure out how to reach your readers and if the timing is right and if the stars otherwise align, then things may work out... but I don't think it's as easy as "if you write it, they will come".

 

I had visions of Mike Myers as Wayne speaking your last sentence!

 

But this all has to kept in context, including the judge's questions. It is clear beyond doubt that you could trademark the word COCKY, for something like a perfume, or a brand of clothing, or what have you (assuming you were entitled to the mark; e.g. no prior use that would prevent your registration, and the like). During that line of questioning, the judge is asking about how you protect the mark in the present context.

Just making a clarification, because I can't even count the number of posts I've seen on social media saying you can't get a trademark on a single, pre-existing or common term, which is false.

 

That's not exactly what is happening here. Trying to trademark "football" for a football wouldn't even get through the trademark office. That's generic, and you can never trademark a generic term--it's not difficult, it's impossible.

If a mark is descriptive, you can get a trademark registration if you can show what is called "secondary meaning" (i.e. the mark has come to take on significance in the public). Faleena's mark isn't generic, but it is arguably descriptive. She also has prior users to deal with. It doesn't look like the trademark examiner who reviewed the application even considered the mark descriptive, because she didn't issue an office action on that basis, but instead simply allowed the mark. Which means the examiner likely considered the mark to be "suggestive," and suggestive marks can be registered without proving secondary meaning. In truth, the examiner would have arguments to back up the view that the mark is suggestive.

Setting aside the fact that Faleena seems crazy, and that there are prior usages, the case actually raises some interesting questions about trademark law, and about how aspects of trademark law that function fairly well in most areas might be problematic when it comes to something like a book series.

 

When I say it raises interesting issues, consider this (from TV series, not books):

Sony Pictures Television produces the TV show "Outlander," based on a Diana Gabaldon historical romance. They have a trademark registration on the word OUTLANDER for dramatic, historical TV series. That's a single word, in use before the book was ever written. It could be argued as either descriptive or suggestive.

It would be interesting, legally, to distinguish Sony's OUTLANDER mark from the Faleena case.

 

Yes, I think he does feel it is descriptive. And I don't think it likely he is going to find secondary meaning. But Faleena's lawyer should definitely be arguing it is suggestive.

 

and the discussion over Cocky Mother's Day.

 

I think that's part of the real problem. Also, a prior use issue and whether the term even serves as a mark for her.

The case in federal court should deal with how she's enforcing the mark. The cancellation proceeding, though, will determine whether she's entitled to a registration at all. From an academic standpoint, lets assume she doesn't have a prior user problem. Is there a good way to distinguish her mark from the case of OUTLANDER? The most obvious answer is OUTLANDER is a well-known book series, so you have secondary meaning. If that's the distinction, then it means that if Faleena could keep her use of the mark going for a few more years she might be able to make an argument of secondary meaning. If she does, should she get the mark at that point? And if not, should Sony lose theirs as well?

Hopefully the judge and TTAB will be thinking about these things. There's a saying--hard cases make bad law. This could be one of those situations if not handled well.

 

I don't know if I think she's crazy. Very few people would maintain their public persona when under the kind of backlash she's been taking. Few people, if any, receiving a hundred threatening letters a day will handle it well. Getting drunk, making videos, writing letters to yourself. That's all whatever.

 

I don't think she's actually crazy either. I think she has come across as irrational in this, and as playing the victim. But that's just an impression I have--I don't know the woman and certainly can't say what her mental state really is.

 

She seems like a victim to me. The RWA disagreeing with her position and paying her targets' legal fees is just. People blogging or posting about their feelings on the case is just. Nothing else is. Certainly nothing that looks like slander or sabotage.

 

If you look for single tradmarked words, you will find them.
Coke
Pepsi
Nike
Nescafe
Heinz

BUT, those are not words in every day use, and they are not part of a longer title.

You don't have cans of drink labelled "Carbonated Caffiene Pepsi Drink" and just TM "Pepsi"

And the TM holders of Pepsi (and all the others listed) would only go after other people misusing the word if they were to do it in the exact font and print it on things which are then advertised as the original Pepsi.

Most single word trademarked brands are unique in that they are not in everyday use, with the exception of Heinz - which is a name. (there will be others) yet Heinz the company, has not stopped other people using the name in every day life. I dare say that if a producer of canned food called Mr Heinz started up his own business and labelled his cans Heinz, then the already established Heinz may have a case, unless the new Heinz had a totally different packaging. We see this with Coke, who also own the trademark Coca-Cola with the Coca-Cola script - but as you are no doubt aware, there are umpteen other brands with the word "cola" in them. Pepsi Cola, Sam's Cola, 5Star Cola, even the supermarkets have there own Colas yet Coke, and Pepsi, have never gone after these competitors in court.

So really, if she was given the tm for cocky, her books should all be called, "Cocky." And nothing else. (which is a bit silly considering 18 different books would all have the same name.

Sorry, I've kinda forgotten where I was going with this.

 

I think she's a victim of herself.

 

@Steerpike, can you clarify the stuff about Kevin Kneupper? I give myself Ten Armchair Lawyer points for anticipating that there'd be an issue with standing, but the rest of it was... was just the judge saying he didn't have the jurisdiction to make even a preliminary ruling on anything to do with KK's challenge to the trademark? Was that what was going on? He wouldn't even say whether or not KK had standing without hearing evidence?

So then... there was nothing else to be done re. KK at this time so the judge removed him from the case? (And his trademark challenge will still go forward and the matter of standing will be determined at a later date?)