Last spring (2018), romance writers lit up social media over a trademark for the adjective cocky. 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’ll wait) and you will find a slew of romance books that use the word cocky. 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 cocky. That outcry intensified when Faleena Hopkins filed a lawsuit against a few writers requesting a preliminary injunction to prevent publication of books that included the word cocky in the title. The Authors Guild and Romance Writers of America joined the suit against Ms. Hopkins by providing legal and financial assistance to the defendants.
Here’s the outcome of that lawsuit and what it means for writers wanting to trademark their brand. But first, a quick refresher on the facts of the case and trademark protection for single words and book titles.
Who is Faleena Hopkins
I’ll take Authors for 30, please. If you are unfamiliar with Faleena Hopkins (I was, until the cocky brouhaha), 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. A series filled with cocky guys.
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. Both were registered to Hop Hop Productions Inc., her Delaware Corporation. 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:
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.
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 prepared their own complaint. And a petition by MoveOn.Org was circulating to invalidate the trademark. Not to mention, the social media lashing Hopkins received. Just take a gander at #cockygate.
The problem was that Ms. Hopkins believed she owned the word cocky, a common misconception with trademarks. By threatening others who use the word cocky, she 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’ demand for exactly this reason (then tweeted about it).
In reality, a 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 was how Ms. Hopkins defended herself on Twitter: she obtained the trademark to protect her brand (the Cocky Series) and her readers from losing money because consumers purchased someone else’s romance book thinking they were buying her series.
Unfortunately for Ms. Hopkins, upon closer inspection, her argument is weak and her trademark invalid. Here’s why.
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 cocky, the use of the word 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 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 cocky in the title.
Maybe Faleena Hopkins’ intentions were genuine when she thought she was creating a brand with her Cocky Series. Maybe she should have attempted to trademark her 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, if you read my earlier post about trademark protection for book titles, you are correct.
As a general rule, book titles do not meet the legal qualifications for trademark protection. But some book titles do through great success, wide distribution, or as part of a distinctive 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.
The problem for Faleena Hopkins is her trademark is weak (and so would a trademark for the title/series), which is why her trademark failed to hold up under further legal scrutiny when the Authors Guild and Romance Writers of America helped challenged her mark in court. Ms. Hopkins had filed suit against various defendants requesting a preliminary injunction to prevent publication of books that included the word cocky in the title. In ruling against Hopkins, Judge Alvin Hellerstein of the Southern District of New York believed that Hopkins would not succeed on the merits because the word cocky was common and a weak trademark. Accordingly, Judge Hellerstein dismissed her suit. Shortly thereafter, Ms. Hopkins settled the case and withdrew her cocky trademarks, clearing the way for romance writers to sell books with titles that use the word cocky.
The take-away for book trademark branding
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. Avoid using as your trademark words that are not unique, words that have been in widespread use in the genre, and words that are merely descriptive of some aspect of your book.
And remember, trademark protection for book titles (or keywords in the titles) is only available to titles that have reached a sense of notoriety, are identified with an author or a publisher, and have achieved secondary meaning in the marketplace, like great success, wide distribution, or as part of a distinctive series.
What to do if you receive a cease and desist letter
- Time is of the essence. Contact your lawyer or hire one.
- Do not contact anyone that is on the cease and desist letter.
- Do not rant on social media to tell others about the cease and desist letter.
- If anyone contacts you about the cease and desist letter, refer them to your lawyer.
- Form a strategy with your lawyer for how to respond to the letter.
- Follow your lawyer’s strategy.
Photo Credit: anoldent | Visualhunt | CC BY-SA
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