I’m not a lawyer in real life. I do play one online so this means I know everything, and I’m always right. I’m going to attempt to make sense of all of this cockamamie issues of trademark and half-cocked lawsuit.
If you’re an author and you haven’t heard of #cockygate then you need to examine yourself. That or check that cave you’re living in.
Here’s a timeline of events:
- May 5, 2018 – Faleena Hopkins got cocky when she sent out cease and desist letters to authors using the word “cocky”.
- May 5, 2018 – Romance writers in twitter-verse exploded with rage, disgust, and alarm when her letters were publicly shared.
- May 6, 2018 – Kevin Kneupper, an author and retired intellectual property attorney, files a Petition to Cancel Hopkins’ trademark before the U.S. Patent and Trademark Office (USPTO).
- May 6, 2018 – Romance Writers of America (RWA) contacts an IP attorney to seek advice re cockygate.
- May 8, 2018 – RWA contacts Amazon to request it cease further removals/suspensions of books with titles containing “cocky”. The next day, Amazon responds to RWA and agrees to stop removing non-Hopkins “cocky” books.
- May 16, 2018 – Authors Guild and RWA send a demand letter to lawyers representing Faleena Hopkins, demanding she retracts trademark infringement claims and cease all future claims, including that she writes Amazon regarding her take down demands. The letter also advises Hopkins that they would be filing a petition to cancel her cocky trademark.
- May 25, 2018 – Hopkins files a request for a preliminary injunction (PI) and temporary restringing order (TRO) against Tara Crescent, Jennifer Watson, and Kevin Kneupper (Defendants).
- May 25, 2018 – Judge Ramos denies the TRO and orders a hearing to show cause regarding the PI on June 1, 2018.
- May 31, 2018 – Defendants file an opposition to the PI and TRO.
- June 1, 2018 – Judge Hellerstein denies the PI and TRO but schedules the next phase of the suit, which is discovery. In addition, the Judge also orders the removal of Defendant Kneupper from the lawsuit stating that the petition before the USPTO is not in his jurisdiction which was the proper call.
There are now essentially two actions on this case. The first action is the Petition to Cancel filed by Kevin Kneupper before the USPTO. The second action is the lawsuit Hopkins filed against the Defendants in federal court.
Note that both RWA and Writers Guild have gone on record that they would also be filing a Petition of Cancellation with the USPTO. I’ve found Kneupper’s petition slightly problematic because one of the tests to successfully cancel a trademark is that the moving party must be adversely affected if the trademark stands. Given that Kneupper is not a romance writer and the trademark pertains to “romance” books and e-books, his claim is tenuous. However, the RWA and Writers Guild have a better standing, especially as one of the defendants, Crescent, is not only adversely affected by the trademark but is also a member of both industry associations.
In Hopkins’ suit before the federal court she’s seeking several things that are not really that different than the TRO and PI, except that if she wins the lawsuit, these orders will be permanent.
- Hopkins wants the court to declare that her use of her trademark does not infringe on the rights of the Defendants, meaning that the Defendants are not negatively impacted by Hopkins’ trademark(s).
- That the Defendants cannot adversely act on Hopkins’ trademark which means the Defendants cannot use the word ‘cocky’, and that they cannot challenge the validity of the trademark.
- Watson has to stop selling/promoting Cocktales or any other publications that is meant to confuse the public in regards to the trademark.
- Watson removes everything associated with Cocktales including the takedown of the website www.cockyauthors.com.
- Defendants deliver to Hopkins all marketing materials that infringe on her trademark.
On the June 1, 2018, Judge Hellestein used the Polaroid Factors to determine whether he can grant Hopkins’ TRO and PI requests. The judge went factor by factor:
- The strength of the senior mark. The senior mark refers to the mark that was used first or the one registered. Note that there were other users of the word ‘cocky’ before Hopkins registered or started using it, so on this basis alone, her claim to the trademark is weak. However, the measure of the issue of distinctiveness is further categorized::
- Generic – if a word or symbols describes the product instead of distinguishing it from its competitors it may be considered generic. In Hopkins’ case it can be argued that since her use of ‘cocky’ is a description, and that the word ‘cocky’ was used before she did, then the trademark fails on this test.
- Descriptive – if the words or symbols describe the ingredients, qualities, features, purpose, or characteristics of a product, then they are likely not considered distinctive. The only way the mark is distinctive is if it acquires a secondary meaning that consumers recognize as being from that particular company. For instance, when we say ‘I use an Apple,” most consumer knows it applies to the Apple brand of computers therefore the word ‘apple’ has acquired a separate meaning. Hopkins will be hard pressed to prove that ‘cocky’ has acquired a secondary meaning, especially as ‘cocky’ describes the heroes/heroines in her book as “Cocky Senator” or “Cocky Surgeon”.
- Suggestive – these types of marks suggest qualities of the underlying product but require you to use your imagination to figure out the nature of the product. The word ‘cocky’ is suggestive but really, does it require one to use his/her imagination? A consumer of romance books will know what ‘cocky’ refers to.
- Arbitrary – arbitrary marks are names that exist in popular vocabulary but have no relationship to the products for which they are used, such as the trademarks for Apple and Target.
- Fanciful – fanciful marks are terms invented for the sole purpose of serving as trademarks such as Pepsi. These have no association at all with the product being used. These are inherently distinctive and are the strongest marks that a company can have.
- Relatedness: If a word or symbol describes the product instead of distinguishing between competing version of the product then it may be considered generic. These types of marks are never distinctive and no trademark protection is given. The Judge in this case seems to think that the trademark is descriptive rather than distinguishing the product. This point goes to the Defendants.
- Similarity of the marks: courts look at the pronunciation of the mark, its appearance, and the verbal translation of the conflicting marks, whether it can cause confusion. The mark is viewed in its entirety, not by its individual features. Here the judge says that the marks are similar. This goes to the Plaintiffs’ win column.
- Evidence of Actual Confusion: if Hopkins can prove that there is actual confusion, then she has a stronger claim of infringement. However, the Judge stated that he didn’t find actual confusion, which further weakens Plaintiffs’ case.
- Competitive Proximity: part of the test is whether the trademarks will be sharing marketplace and the situation surrounding their purchase. In this case, since the products are books, they are sold in the same space thus the Judge said they are proximate, which is a point for Hopkins.
- The Degree of Purchaser Care: When courts look at this factor, they apply the standard of a typical buyer exercising ordinary caution. Here, the Judge stated he couldn’t find actual confusion of the books, saying that purchaser sophistication is “high” therefore there is less room for confusion.
- Intent of the Defendant in Selecting the Mark: if the infringing party purposely copied the trademark to cause confusion, then this may be sufficient to prove the likelihood of confusion. The Judge thinks it’s a “mixed factor” whether the Defendants acted in good faith. He cut the baby in half here but I think this favors the Plaintiff more.
- Likelihood of Expansion of the Product Lines: if either business can expand and compete with each other, then there is stronger argument for an infringement. Here the Judge rules that this was not a factor as the products in question are already in the market. However, Hopkins can point to the fact that since the products are already in the market this proves that there is a likelihood of expansion of the product lines.
The Judge (page 41, line 11 of the transcript) states that
“these titles look more adjectives than indications of source, that we have a weak mark…It is more a description of the nature of the contents.”
Although, the Judge cannot invalidate the trademark as it is not within his jurisdiction, this certainly helps the position of Kneupper in his Petition to Cancel. Furthermore, the court held that “I hold the defendant is NOT using the word ‘cocky’ in a mark. Although there could be a likelihood of confusion, other factors, being equal, that there is some kind of an infringement, at this point I don’t think there’s a similarity.”
He determined that based on the Polaroid test, he cannot grant the TRO and PI. This was hardly surprising as there is, generally, a big hurdle when parties ask courts to stop other parties from doing certain things, especially when it means giving up their rights, which in this case are Crescent’s right to earn a living, and Watson’s and her clients’ (the Cocky Authors) freedom of speech. Instead, he moved the lawsuit to the next phase which is discovery. In the meantime, the lawyers for the Defendants are going to move a motion to dismiss the case.
Assuming that the motion to dismiss is not granted, I would be surprised if the court doesn’t decide to stay this lawsuit until the USPTO decides whether the trademark is subject to cancellation or not. If the USPTO decides to cancel the trademark, then the lawsuit is moot. If the USPTO decides to keep the trademark as valid, then the suit can go on.