Trademarks

Cocky: One Writer’s Adjective, Another Writer’s Trademark – For Now


Romance writers lit up social media last week over a recent trademark for the adjective “cocky.” As with any genre, romance novels have a specific set of conventions. Open any romance book and you will find a tone that ranges from mildly sensual to fully erotic, and flush with sexual innuendoes, euphemisms, and double entendres like “cocky.”

The sexual connotations of the adjective originated in the mid-16th century when cocky meant lecherous. By the 18th century, cocky had morphed to arrogant but still retained the sexual implications. As you can expect, the descriptive word can be found in countless numbers of romance novels, whether on the page, in the title, or with the back-cover copy. Search Amazon for cocky + books (go on, I will wait) and you will find a slew of romance books that use the word. So it is no surprise that romance writers were in a tizzy when the U.S. Trademark Office issued a trademark to Faleena Hopkins for the word “cocky.”

Who is Faleena Hopkins?

If you are unfamiliar with Faleena Hopkins (I was, until now), she is a self-published romance author with a book series about the Cocker brothers. Each title in the series features the word “cocky” — Cocky Roomie: A Bad Boy Romance Novel, Cocky Soldier: A Military Romance, Cocky Cowboy: A Second Chance Romance. You get the picture.

In April and May of 2018, Ms. Hopkins obtained two trademarks for use of the word “cocky” in a series of romance books: one trademark for the word without any particular font style, size, or color; another trademark for a stylized version of the word. Then she promptly sent cease and desist letters to romance authors with novels that contained the word “cocky” in the title. Her request? Remove the word from their title or face legal action.

Author Jamilla Jasper received one of the first cease and desist letters from Ms. Hopkins, which was published on Twitter along with a few hashtags like #cocky and #cockygate. And the firestorm started. Here is the cease and desist letter as posted on Twitter:

Hi Jamilla,

My name is Faleena Hopkins, author of Cocker Brothers, The Cocky ® Series,

The Federal Trademark Commission has granted me the official registered trademark of the word/mark “Cocky”, no matter the font.

Trademark Registration number: 5447836

I am writing to you out of professional respect so that you may rename your book “Cocky Cowboy” which shares the same title as my book, and republish all of the versions (ebook, paperback, and Audible) on Amazon to keep your ratings and money earned.

My attorney at Morris Yom Entertainment Law has advised me that if I sue you I will win all the monies you have earned on this title, plus lawyer fees will be paid by you as well.

I will do that – but I would rather give you the option.

I have had this series established since June 16, 2016 and I take all of the hard work I put into establishing it very seriously.

Your hard work I also take seriously.

You have the opportunity to adjust, rename, and republish before taking further action. You can do so on Amazon without losing reviews.

Thank you,

Faleena Hopkins

Naturally, romance novelists quickly banded together to defend their right to use the word “cocky.” Kevin Kneupper filed a petition with the Trademark Office to cancel Ms. Hopkins’ mark as invalid. Romance Writers of America is preparing their own complaint. And a petition by MoveOn.Org is circulating to invalidate the trademark. And of course, there is the social media lashing Hopkins has received. Just take a gander at #cockygate and #cocky.

The problem is that Ms. Hopkins seems to believe she owns the word cocky, a common misconception with trademarks. By threatening others who use the word cocky, she has quickly earned herself the tag: trademark troll. It is a pejorative term that refers to a trademark owner who, under the misconception their trademark has given them a monopoly over any use of the mark, threatens to sue anyone who does use it. For writers, a cease and desist letter is scary to receive. The possibility of a costly legal battle is enough pressure for authors to agree to the trademark owner’s demands even though the trademark is invalid. In fact, a few authors immediately complied with Ms. Hopkins demands for exactly this reason (then tweeted about it).

In reality, the trademark only provides the owner the ability to prevent others from using the mark in the fraudulent selling of goods to deceive the public as to the source of those goods.

At first glance, it seems plausible that Ms. Hopkins has the right to stop others from using the word cocky in their romance titles. Consumers might confuse a book with the word cocky in the title as being part of the Cocky Series written by Ms. Hopkins. In fact, this is how Ms. Hopkins has defended herself on Twitter: she obtained the trademark to protect her brand (the Cocky Series) and readers from losing money thinking they were buying her series.

Unfortunately, upon closer inspection, Ms. Hopkins’ argument is weak and her trademark most likely invalid.

Trademarks for single words

To trademark a single word, there needs to be something unique about the word in association with the goods. It cannot be descriptive of the goods. For example, lotus is not unique when used with flowers. It is descriptive. But lotus is unique and not descriptive when used with software. Same for the mark Apple.

As for the word cocky, the use of it in romance novels is descriptive for arrogant characters, and any other sexual innuendo you wish to imply. Likewise, there is nothing unique about Ms. Hopkins’ use of the word cocky for the Cocky Series because the word has been in widespread use in the romance world well before Ms. Hopkins acquired her trademarks (e.g., Her Cocky Doctors (The Cocky Series Book 1) or Cocky Bastard). In fact, one might argue a Faleena Hopkins’ book might confuse readers it was part of another author’s romance series with the word cocky in the title.

Does that mean you cannot trademark a title

I can hear you now, screaming from the back of the auditorium (where you were reading romance novels, right) — Hopkins cannot trademark a book title. And for the most part, you would be correct. As a general rule, book titles do not meet the legal qualifications for trademark protection (read my earlier post on trademarks for book titles if you need more info).

How does a title rise to the level of trademark protection

Through great success, wide distribution, or as part of a series. Think Harry Potter, Goosebumps, Idiot’s Guide, Chicken Soup, Twilight, Gone With The Wind, To Kill A Mockingbird, and The Hardy Boys. All of these titles (or keywords in the titles) have reached a sense of notoriety, are identified with an author or a publisher, and have achieved secondary meaning in the marketplace. In short, books that have become brands operate as an identifier of the source of the books offered by that brand and thereby considered trademark protectable.

Why trademark a book title

One word: BRAND! Stand-alone books or book series that reach a level of notoriety have the opportunity to create multiple merchandise licensing streams (like clothing, action figures, etc.), lectures and courses, or film and television opportunities. That means a potential cash cow for authors (one that often usurps book revenues). And who would not want to ride that stream of income? A trademark will provide a writer with the necessary intellectual property for such licensing opportunities or preventing other authors from riding on your coattails with a confusingly similar product.

Maybe Faleena Hopkins’ intentions were genuine when she thought she was creating a brand with her Cocky Series, but her trademark is weak and I doubt it will hold up under further legal scrutiny. Only time will tell. The lesson to learn here is when picking a word or phrase to represent your brand, the trademark must be strong and distinctive such that the trademark distinguishes your books from the books of other authors.

What to do if you receive a cease and desist letter

  1. Time is of the essence. Contact your lawyer or hire one.
  2. Do not contact anyone that is on the cease and desist letter.
  3. Do not rant on social media to tell others about the cease and desist letter.
  4. If anyone contacts you about the cease and desist letter, refer them to your lawyer.
  5. Form a strategy with your lawyer for how to respond to the letter.
  6. Follow your lawyer’s strategy.

 


Photo Credit: Gwendal | VisualHunt.com | CC BY-NC-SA

Legal Disclaimer: This information is provided for educational purposes only. Consult a qualified lawyer in your jurisdiction for all legal opinions for your specific situation.

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