Plenty of cock to go around

Soon we may have all sorts of COCK-formative trademarks engorging the United States Patent and Trademark Office (USPTO) database because the bar on registering scandalous trademarks is dying a slow death. But the current COCK-related trademark controversy is more complicated and, frankly, less fun than the pending application for COCK SUCKER for candy in the shape of a rooster.

Faleena Hopkins has written several self-published romance novels, among them the Cocker Brothers of Atlanta series, also called the Cocky series. These brothers, though they have cockiness and, apparently, horniness in common, have chosen diverse paths in life. Titles in the series thus include Cocky Marine, Cocky Cowboy, Cocky Genius and Cocky Senator.

After publishing a number of books in the series, Hopkins went on to obtain two federal trademark registrations for COCKY. She owns one for COCKY in no particular font for “a series of books in the field of romance” and “a series of downloadable e-books in the field of romance,” issued April 17, 2018. And another stylized mark for the same goods, issued May 1, 2018:

Armed with her registration, Hopkins appears to have used the Amazon Brand Registry to have Amazon take down several novels with “Cocky” in the title. (The ABR requires a trademark registration.) She has also sent out several cease and desist letters to individual authors with “Cocky” titles.

This has pissed the publishing community off royally. For the full shitstorm, check out #cockygate on Twitter. Just brace yourself for the vitriol. The Romance Writers of America trade association is consulting with legal counsel to figure out how to stop Hopkins, and a Moveon.org petition urging the USPTO to cancel Hopkins’ trademark registrations has almost 27,000 signatures as of this writing.

How did Hopkins get a registration?  

Actually, her application sailed through without any challenge from the USPTO examining attorney, which is not the norm. The USPTO allows registration of part of the title of a series of books if it identifies and distinguishes the goods from those of others. Think CHICKEN SOUP FOR THE SOUL and FOR DUMMIES.

What can Hopkins do, given her trademark ownership?

The question is whether book purchasers would be likely to think that another book was part of Hopkins’ Cocky series. Hopkins has made claims on Twitter of actual buyer confusion: “I receive letters from readers who lost money thinking they bought my series. I’m protecting them and that’s what trademarks are meant for.” With all relevant facts taken into consideration, if another author uses the COCKY trademark in a way that is likely to mislead consumers into believing that his or her book is part of Hopkins’ series, Hopkins may have a viable claim against that author.

Note that Hopkins doesn’t need a registration to stop infringement of her trademark rights. Trademark rights in the U.S. arise with use, though registration give certain procedural advantages in litigation. And Hopkins’ trademark registration serves as nationwide notice to warn away anyone who might later want to create a COCKY series of his or her own.

What can Hopkins not do?

Contrary to what the Internet fervently believes, Hopkins DOES NOT own the word COCKY. She can’t stop someone from using the word in conversation, in song, on a t-shirt, on a billboard or in a book. Nor can she stop the application for COCKY CARROT for sex toys.

She may, as described above, be able to prevent the sale of a book or book series that is likely to confuse consumers into thinking she wrote it. But that’s not every book with COCKY in the title, not by a long shot, not even every romance novel using the term in the title. And the First Amendment looms large to protect expressive content that isn’t misleading.

In a trademark infringement case, a court would first look at the similarity of the titles. COCKY MARINE and, say, BOB THE COCKY PLUMBER’S ASSISTANT may well not be similar enough to be confusing. It also looks at the similarity of the goods. The mark is used and registered for romance novels, so the hypothetical COCKY TACO COOKBOOK would be unlikely to run afoul of Hopkins’ rights. Are the books’ covers similar, from images to design to font? Is the author’s name prominent enough to distinguish the books? Are they sold in different stores or on different websites? Also, if someone was using the mark before Hopkins, that other person would retain priority even though she has a trademark registration.

And the First Amendment is going to be a big time obstacle to any claim Hopkins makes against a fellow author using COCKY in the name of a book. A line of cases followed by several federal courts makes it very difficult to challenge the use of a trademark in a book or movie title. The test asks whether the mark has any “artistic relevance to the underlying work whatsoever.” If there’s any relevance at all,  which is highly likely to be the case, a court will generally refuse to enjoin the use unless “the title explicitly misleads as to the source or content of the work.” For example, a court allowed the use of the BARBIE mark in the song “Barbie Girl,” which mocked Barbie and her plastic values.

Attempt to cancel Hopkins’ registration

Novelist and attorney Kevin Kneupper filed a petition on May 14 to cancel Hopkins’ trademark registration. Does he use COCKY in the title of one of his books? Did he receive a cease and desist letter from Hopkins? Not exactly. He just seems to be mad as hell and aiming to rid the world of this injustice.

In order to pursue such a petition, Kneupper has to show that he will be damaged by the existence of the registration. He says he’s in competition with Hopkins and has described characters as “cocky.” But the owner of a trademark (registered or not) can’t stop anyone from using that term in a non-trademark sense. Kneupper can call his characters “cocky” all he wants, and even go on to graphically describe the prowess of their cocks if he likes. He can have them travel internationally using a visa or eat a green apple or take the New York subway without being stopped by VISA, APPLE or SUBWAY. So it’s unclear how Hopkins’ registration can harm him on this ground.

Kneupper also claims that he “may” use the word in future titles. If he’s really got a specific bona fide intent to use the same mark for related goods, then he “may” be able to pursue his claim. But a vague hunch that he might want to use the word at some point is unlikely to impress the Trademark Trial and Appeal Board.

He also argues that the term “cocky” is generic and unregistrable because it describes alpha male characters commonly encountered in romance novels. But context is everything in trademark law. What is the term generic for? The phrase ROMANCE NOVEL is generic for a series of romance novels. COCKY isn’t generic for romance novels. Just because the word is commonly used in the industry doesn’t make it generic.

Cock blocked

Everyone involved suffers from some misunderstanding of trademark law. Hopkins appears to be overreaching, the romance writer community indignantly thinks the federal government has given her a monopoly on a word, and Kneupper may have a tough time turning his selfrighteousness into a viable challenge at the USPTO. Overreaching in enforcing a registration simply isn’t a basis for cancelling it, no matter how cocky you are.