What are the hazards of attempting to enforce a weak trademark?
A romance novelist took out a trademark for the word “cocky,” then attempted to enforce this mark against fellow authors. What unfolded became known as #CockyGate. Our NYC trademark and service mark lawyers explain the facts of the “cockygate” case and the broader implications of the case for all trademark authors below.
Background of the Case
Faleena Hopkis is a romance novelist who has authored a series of books that use the term “Cocky.” Titles include Cocky Cowboy and Cocky Senator, among others. Hopkins filed an application for a federal trademark of the term “cocky,” both in text form and stylized script. The USPTO granted both registrations in April and May of 2018, despite the commonality of the term.
Shortly after receiving the trademark, Hopkins issued several cease and desist letters to other romance authors, asking them to stop using the term cocky both within the titles and text. Hopkins sought a preliminary injunction against a romance author who used cocky in its title. Recently, a New York district court judge denied the motion, finding the mark weak.
The cockygate saga should serve as a warning message to authors to think long and hard before trademarking and attempting to enforce a weak mark. Attempting to trademark common terms can ultimately prove to be a waste of resources. Common terms often come with descriptiveness issues. These marks are weak because they are often used in prior works. The commonality of the term cocky is clear given the many other romance novels that use the term both within their title and text.
Trademark owners that attempt to enforce a weak mark could find the mark cancelled. Until a trademark is declared incontestable, which must be at least five years from the registration date, the registration is vulnerable to cancellation. Loss of the registration will severely limit your legal rights to the term. As such, attempting to enforce a new and weak mark could end with the USPTO cancelling the mark altogether.
Potential trademark authors should consult with a trademark attorney for an analysis of the strength of the mark. Your attorney will assist you in legally protecting a strong mark so as to prevent competitor use. Contact us today.