26 May 2018

Trademark Cock-Up

This is not the first blawg piece to discuss the ineptness of trademark law and practice regarding the arts — not even on this particular bit of nonsense. It won't be the last. And it won't be the last to recommend the Jack Daniels approach to every trademark issue in the arts that does not clearly arise from intentional and unfair passing off or counterfeiting. I do not promise that I won't be cocky about it.

In any event, Writer Beware offers a clear, balanced, and accurate description of problems that have arisen from US Trademark Reg. Nos. 5447836 (word mark) and 5458137 (graphic representation of word mark), purporting to register the term "Cocky" in class 9 and class 16 claiming first use in commerce dates of 16 June 2016 (and a later registration for a specific graphic version). The mark purportedly uniquely identifies "A series of {downloadable e-books}{books} in the field of romance." Here's how I would evaluate this claim of right to the word mark (the '836 registration) if an author came to me with concerns, but not having received a notice:

  • The mark is, by its nature, quite weak. It concerns appropriation of a common-use term to describe goods related to the ordinary meaning of that word. (I'm not at all certain that a registration was justified given the short use in commerce.)
  • A quick search of the US Trademark Office's records (which you can do yourself at TESS; unfortunately, due to the session-based access to the database in question, I cannot provide a URL directly to the search results individually or as a whole) reveals more than 80 applications and grants related to the word "cocky," indicating that this isn't exactly a novel usage in general. Somewhat amusingly, most of the records for the word "cocky" alone relate to clothing… and we'll return to the relevance of that later (it's hinted at above).
  • A quick search of the Library of Congress's catalog (again, thanks to session-oriented database results, there isn't a way to give you a URL to the list of results) results in well over 100 entries for "Cocky" in the title… including three from romance publishers, two of which appear to be series books from the same designated author (not this trademark holder… but not necessarily the same person, either). As these all date from more than one year prior to the claimed use-in-commerce date, I can only infer that nobody did an appropriate search in the right places — they all would have shown up well prior to the application date.
  • A quick search at WorldCat (again, session results so I can't point you at exactly what I saw) is even worse, with several hundred results (and at least six comparable in the first hundred). Again, these all date from at least one year prior to the claimed use-in-commerce date.

I would thus tell an author who had used merely the word "cocky" in his or her book title or description — especially if used as a description in its ordinary-language sense — to relax and forward any correspondence to counsel. (Frankly, Ms Hopkins, or rather her business entity, can have the graphical mark… well, maybe not entirely, but it's really not worth fighting over, especially since in many e-book formats and/or readers it won't be visible as a graphic anyway.)

The real problem here, though, is the particular approach taken to others' uses. In descending order of seriousness:

  • There has been no visible screening of "uses" by others for nominative or fair use. This is itself an unfair trade practice and unfair competition.
  • Neither has there been visible screening of "uses" by others for actual competition — that is, reference standing by itself to a series of romance books/e-books. Asserting that including a series mark inside a single instance title would be, umm, a novel legal theory… especially since single-instance titles are per se not registrable as trademarks, creating an inverse inference of inherent (non)infringement. (Example: A book entitled The Relationship of Star Trek Novelizations to Film and Television Canonical Developments does not infringe the Star Trek mark.)
  • Trademark law (and, in particular, the registration system as it exists… remembering that registration of trademarks is optional) is ill-suited to the arts in the first place, and especially to anything even slightly outside the core of the high-school English curriculum. Trademark law is about verifying the authenticity of widgets; series titles for books in the field of romance, not so much.

    Which leads to the real point: Unless one has decent evidence of intentional counterfeiting or passing off that has no tenable treatment as parody ex ante, the holder of a mark in the arts is almost always better off using the Jack Daniels approach to others who are "invading one's space." Ms Hopkins, her business entity, and her counsel appear to need some serious education on this point; they're not alone, by any means (recall the "space marines" fiasco), but they're in the spotlight this time because they got cocky about the scope of the mark.

  • Trademark law is also ill-suited for the arts because some old, arguably no-longer-good-law cases on so-called "genericide" have resulted in overreaching, often over the line into paranoid, interpretations of the "must object" aspect of trademarks. Unlike copyrights, trademarks require the holder to object to actually infringing uses of the mark without a license. This is "black letter" law… written on thoroughly decaying paper that doesn't note the multiple changes in both statutory and case law since it was stated. It's actually incredibly difficult to win, because it's very fact-specific. The entire point of the "Jack Daniels letter" is that it is a sufficient response to almost certainly avoid later genericide. Every reported decision imposing a forfeiture penalty for "failure to defend" in the US since the mid-1990s that I have found required systematic, intentional infringements over an extended period of time, analogous to "adverse possession" in real property, that were known to the holder and nonetheless completely ignored. There was no requirement to file or even threaten suit to create a sufficient response; indeed, the reported decisions are remarkably vague other than noting that the holder "objected" (or similar language) when rejecting an asserted failure to defend.

Ultimately, this is more probably an ego problem than anything else. (I don't have enough information to narrow down whether it's author ego, agent ego, publisher ego, lawyer ego, or some combination thereof.) Creators — including authors, composers, artists, etc. — have a greater tendency than even real-estate developers toward extreme embracing of endowment entitlement (PDF). This is exacerbated when they encounter (worse yet, are) marketing executives who "grew up" in fungible widgets and supermarket economics. And that leads to behavior that makes slapping "Trump" on recently acquired buildings, and then never giving it up, look positively reasonable.