Last year, we were reporting on the Kylie v Kylie trade mark war. This year, there's another dramatic trade mark war but this time it's over the word 'cocky' and is publicly being waged on Twitter via #cockygate.
Author Faleena Hopkins has successfully registered two trade marks for the word 'cocky' with the US Patents and Trade Mark Office, for a series of books and ebooks in the field of romance. Reactions to this are perhaps best captured by the parody books which were subsequently made available for purchase. She inspired another author to file for a trade mark for the word 'forever', but that application has since been withdrawn.
In what some might describe as cocky enforcement of a trade mark, Ms Hopkins began enforcing her rights against other romance authors who had used the word 'cocky' in their book titles. She reported some books to Amazon for trade mark violation, resulting in those works being removed from the site, and requested authors to retitle their books (which would have forced those authors to face the hefty costs of redesigning their merchandise, including posters and covers).
In addition to the standard trade mark, Ms Hopkins also registered a trade mark for a stylised form of the word 'cocky'. Unfortunately, it appears that Ms Hopkins may have had a cockeyed view. It has been alleged that the font Ms Hopkins adopted in the stylised logo was created by another designer and used in breach of the licence conditions for that font. The designer reported on May 26 that they had sent a 'cease and desist' letter to Ms Hopkins.
Members of the community of romance writers unimpressed by these cockamamie trade marks are also fighting back. Former intellectual property attorney and now author, Kevin Kneupper, came out of retirement into the cockpit to contest the trade mark, filing a 'Petition to Cancel' against the trade marks. The proceedings are currently set to carry on into 2019. Additionally, the trade association Romance Writers of America joined forces with the Authors Guild to have Amazon put a hold on removing books and to assist authors in court proceedings against Ms Hopkins (discussed below). There's even a petition asking the USPTO to cancel the trade marks.
Ms Hopkins hopped back into the cockfighting ring and filed requests for a preliminary injunction and a restraining order against Mr Kneupper and the authors of a satirical anthology, 'Cocktales, the Cockiest Anthology'. Both applications were heard before a New York District Court judge on Friday 1 June 2018 and denied on several grounds, including that: it was a weak mark, there was no actual confusion found, the products were of equal quality, the purchasers were highly sophisticated and that while the plaintiff would likely suffer irreparable harm if the motions were not granted, the defendants would likely suffer irreparable harm if the motions were granted. Some documents filed in the proceeding and the transcript of the 1 June hearing were published on Twitter by Mr Kneupper and another author, Courtney Milan.
In an Australian context, it's likely that Ms Hopkins' would have limited success with any action to enforce her trade mark. Assuming she successfully registered the mark in Australia, she would find it difficult to argue that another author's use of the word 'cocky' amounted to trade mark infringement. A word that has been registered as a trade mark can be used to describe a good or service without necessarily infringing upon the trade mark itself. Ms Hopkins would need to show that the other author used the word 'cocky' not to describe the content of the book, but rather to connect the book to Ms Hopkins' brand. This may be difficult to achieve because 'cocky' is, inherently, a descriptive word.
More specifically, Ms Hopkins would need to show that her use of the mark has resulted in customers expecting a connection between the trade mark and Ms Hopkins and to distinguish Ms Hopkins' books from other romance authors' books. However, the word has been used by a variety of romance authors and it is unclear that Ms Hopkins has sufficiently established a connection between her brand and the mark. She likely would find it difficult to establish that the mark signifies a connection to her or distinguishes her goods from others. The mere fact that there has been use of 'cocky' by other authors also raises an issue of prior use. Use of the mark by someone else prior to Ms Hopkins' registration would suggest that she is not entitled to ownership of the mark. It would however also be difficult for another party to establish that they had used the word 'cocky' as a mark earlier.
Speculation aside, the takeaway lesson is that there is more to infringement than just the mere use of a word that another person has trade marked. Anyone who receives an infringement notice should not automatically assume that the trade mark owner is correct in accusing the recipient of infringement, particularly where compliance costs may be high. Owners need to do more than cockily point to the use of the word.