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

Got it. It would have to be romance though, yes? And, would it be the series title that is enforceable (such as Bad Mailman Book 3 of The Cocky Series) or is it also just the title (Cocky Mailman)? And also, sorry for the incessant questioning.

 

So basically, if my book was titled Jane of New York, I couldn't trademark that but if it was the Wild Adventures of Jane. It was a series of books involving the adventures of Jane, and I could trademark that? Correct.!

Another way, like my individual books can't be trademarked but they are all part of an encompassing Journey are Arc for the planet they're on, and I could trademark that, correct?

 

Would arguably be limited to romance, since that's how the goods/services are identified in the registration. I could see someone trying to argue for a broader scope, but I doubt it would be successful. Famous trademarks are an exception and get different levels of protection.

As for infringement, in the U.S. the whole thing revolves around "likelihood of confusion." Would a consumer who sees product X be confused into thinking it was from the same source or affiliated with product Y? It's hard to give anyone a concrete answer on that question ahead of time because it is ultimately decided by a judge or jury. In the case of books, I think there's a problem in that the author's name is right there on the book as well, and so that would lessen the changes of confusion. Also, book readers tend to be aware of the authors they're fans of, and I'd argue they're less likely to be confused into buying something by one person thinking it was written by another. The level of attention to detail by the consumer, sophistication etc. are all factors the courts look at to determine confusion.

Of course, one of the big problems in the system, and the reason trademark owners can often get away with questionable enforcement of their marks, is that it is very expensive to fight someone if they actually file a lawsuit in federal court. The last IP case I was involved in, our side had accumulated close to $100K in fees before we ever got to the point of discovery. The case settled before trial, but by that time the fees were close to 500K.

Specific facts of a case vary, but I've read the average cost of trademark litigation runs anywhere from $120K to $750K. Even in a relatively small case you're going to be in the tens of thousands. I had a case with a relatively small local business who received a cease and desist from Warner Bros. The claim was bullshit, in my view. I think the local business was in the right, legally, and could have won the case. But they had to think about how much money Warner Bros. has, how litigious they are, and decide whether they would (or even could) spend the kind of money it would take to win. The answer was no, so they agreed to Warner Bros.' demands.

Anyway, I'm getting far afield, but hopefully the question was answered in there somewhere

 

If "Wild Adventures of Jane" was the name of a series, and you were using that name in commerce as a trademark, and there weren't any prior users who would be harmed by your registration, then you could likely get the registration

 

Thank you, and yes, it was answered Seems tragically unfair (the last case you referenced) but I guess he with the most money wins

 

That is an interesting point, although to be honest I don't read a lot of indie stuff and havn't noticed that quite as much. It's entirely possible that she writes in that style although I won't be reading her novels to find out. Not really my subject.

 

Sadly, yes. Often, at least. If both sides have enough money to litigate, then the cases usually come out right and the one with less money may well win, but there's a threshold you need to litigate in the first place. I have some clients who get a specious cease and desist letter and have just enough money to make the other side's life miserable, and we can usually settle those or make them go away.

Specious claims from law firms aren't terribly common in my experience. There are ethical rules governing that. Early in my practice I worked for one of the largest firms in the country, and therefore sent out a lot of letters on behalf of big international companies represented by the firm. We wouldn't send one out unless we thought we had a reasonable legal claim against the party receiving the letter. Whether the other side had any money was definitely part of the strategic consideration of the case, but we didn't try to soak the other side, and if it was some mom-and-pop operation we didn't often didn't even want damages--just wanted them to stop infringing. Not that I'm defending all lawyers or law firms. There are some (usually smaller ones) that have a business model that consists essentially of shaking people down for $5k or $10K under threat of a federal lawsuit. It's slimy, in my opinion. I deal with those firms from time to time when one of my clients receives a letter.

 

If the Amazon sample is any indication, you're not missing anything.

 

I wasn't saying lawyers are slimy or anything. Just like anything else, some are some aren't. It was more so the annoyance of the one with the most money just being able to bury the smaller entity whether they're in the right or not. In this particular case I'm hoping it works out since the wrong individual is what appears to be the much smaller entity, and she's clearly just doing this to herself. I guess it evens out.

 

Hopefully this one will work out. And I agree regarding the imbalance in the legal system that hinges on money. I'm not sure what to do about it, but it's not a great system.

 

Doesn't stand a snowball's chance in a supernova of standing up in court. Simplest defense: bring a copy of Webster's Unabridged to court.

 

I think the part of my brain that stores my ability to read just got cancer...
I don't know how anybody could read her books, cause from what I have
seen of her writing style it is POV vomit that has no clue if its 1st or 3rd.
I respectfully pass the worst writer torch to the lady, cause from just a
technical perspective she can't write worth a shit.
Honestly does she even know what editing is for?
Does she know what editing even is?

Read a few revs, and wow, just wow!
Found one that would really suck to get:

I would give this drivel a negative star review if I could. Do not waste your time. Take your money elsewhere. Poorly written and boring with characters that are only slightly more interesting than watching paint dry...or cleaning up after my dogs!

 

Also note that trademark is context sensitive, as opposed to copyright. For it to stand, it must be capable of affecting the trademark owner's ability to do business. This usually means direct competition, as it is intended to prevent hijacking business by confusing customers into thinking someone else's product is from the same entity. There has been some broadening of scope, but it still is in essence the litmus test for trademark violation.

 

Using a trademark in the text of a novel isn't infringement, however.

The petition to cancel is likely to succeed, but that also takes a while. The TTAB has to process it and decide whether or not to initiate a cancellation proceeding. Once they do, the author has a little over two months to respond. Adjudication of the case is probably at least 10 months to a year down the road, and then the author can appeal the TTAB decision to the Federal Circuit. If she wanted to spend that much money, it could tie things up for a couple years, during which time her registration is likely to remain active.

 

That's all possible, but I'm not sure the government is going to jump on the bandwagon and throw a fit about it. I mean, is the public going to feel that it's a good way to spend resources (money or time)? Probably not, so I'd think it's not worth it personally. The falcons might, but then you kind of have the same issue - is it worth their time to jump in on something that already has so much attention? Maybe it is, I don't know.

The reviews is just Amazon erring (incorrectly) on the side of extreme caution. They have now suspended that according to RWA.

 

If you send in a takedown and comply with the requirements, Amazon is probably going to take it down. They get an astronomical number of requests a year and don't have people going through each of them to see whether it is right or wrong. Libel--would be an interesting case at least.

 

@big soft moose Didn't your post mention the USMC or did I respond to something I imagined?

 

Government comes in and tries to stop her using USMC in a title, and suddenly you've got a First Amendment problem.

 

Yeah, I can see that. I had responded that I didn't think it would be a good idea and then realized all mention of them was gone (or never there?).

I'm having a seizure filled day so it's totally possible I imagined it, but I'm still really hoping I didn't.

 

I checked out her blog a few hours ago.
Facebook and twitter accounts are MIA.
Youtube channel is bland and all about
her cocky 'movie' in the works.
Blog is just a massive self wank fest,
and comments are not permissible.
But hey for 15$ you can get your Cocky Merch,
and wear it around town.

The more I learn about this crazy lady, the more
I think she lives an illusion of grandeur dallusions.
Theory: She just wants to bang hot guys, but they
just don't like her. But they will take her money
and let her pretend she is a photographer.

 

I remember someone mentioning USMC as well. I hope your day gets better.

 

Yes, I was under the impression that you can quite easily mention any TM'd item/place/thing within the text of a novel, unless you are painting them/there/it in a bad light.

 

but would they only have a problem if she'd used the full title (USMC) rather than just the word, "Marine"?