A number of readers may have seen the recent furor in the romance publishing sector after author Faleena Hopkins obtained a trademark registration for the word “Cocky” as applied to her book series involving the exploits of the Cocker brothers. Her titles include “Cocky Biker” and “Cocky Cowboy” to name a few. Once she obtained the registration, she apparently threatened other authors who used “Cocky” in their book titles with trademark infringement suits, and approached Amazon asking them to remove from sale her competitors’ books with “Cocky” in the title. I don’t plan to go into all the legal ins and outs of this particular situation in this column, although there’s a very comprehensive blog post on the issues here if you’re interested in it.
What I did want to do today is set out some basic legal notes about trademarks and book titles, an area of trademark law which is often confusing to writers. As always, I must note that nothing written here is intended as formal legal advice and folks who need help with particular issues should consult an agent or attorney (or drop me a line and I’ll see if I can point you in the right direction).
So here are my top ten trademark and book title factoids for your reading pleasure:
- Generally in the United States, you cannot trademark a single book title, although you can trademark a series title where the title is a source identifier for your line of books: for example, “Harry Potter” which identifies the entire J. K. Rowling series or “Thomas the Tank Engine” (likewise).
- Owning a trademark and registering a trademark are two different things. In the United States, registration gives you some advantages, but you can own a trademark whether or not you have registered it.
- That said, a trademark — whether registered or not — is basically a source identifier that distinguishes one person’s (or business’s) products or services from those of another. So you can see how a book series trademark could work like this. Go back to “Harry Potter” and you’ll see that those two words immediately connote the series of books written by J.K. Rowling. It’s like how “Coke” generally connotes products made by the Coca-Cola company.
- The fact that someone has registered a trademark doesn’t mean that the trademark or the registration is necessarily valid. Registration can usually be challenged (and in fact the “Cocky” registration is currently being challenged) on the grounds either that the trademark isn’t registrable and/or that it isn’t truly working as a trademark in the sense of distinguishing your products or services from others.
- You may have heard that you can’t trademark a common English word, or that you can’t register a common English word as a trademark. That’s not true. Provided that the word is operating as a source identifier rather than a general description, it’s arguably able to be a trademark and be registered as such. “Apple” is a common English word, but it’s registered for Apple computers because, in that context, it’s not describing apples (the fruit) but identifying the manufacturer (source) of the computer equipment.
- You may also have heard that you can only trademark, or register a trademark for, a common English word in a stylized version: for example, using a special color or font. That’s also not a requirement under American trademark law. You can register a stylized version of the word or the word itself, again provided that it’s acting as a trademark and not as a simple descriptive term. In the “Cocky” situation, the word was registered both ways: as a stylized version and as the regular word.
- Trademark registration does not mean that you “own” the word itself and that no one else can use it without your permission. What it does mean is that you have certain rights in the word in the context of using it as a mark for the goods or services for which it is registered. So, for example, if you validly register “Cocky” for a book series, you can’t stop someone from using “Cocky” in the context of, say, a food or beverage.
- Trademark registration does not even mean that you can stop everyone else from using your mark in the context of the same goods or services for which you registered it. Others can typically use the mark in the same context if they’re using it in a descriptive way or in an expressive way. This is one area where the law gets a little tricky and where you may need legal advice as to whether your use does, in fact, infringe someone else’s rights.
- You may have heard references to “trademark bullying”. That phrase has actually been used to describe Faleena Hopkins’ registration of the “Cocky” mark. Trademark bullying is not actually a legal term, but it’s often used by lawyers and others to refer to a situation where someone registers a trademark in the hope of knocking competitors out of the field, rather than with a view to seriously protecting their own reputation in the mark.
- Trademark and copyright law are not the same thing. A lot of coverage of the “Cocky” case in particular refers to the “Cocky” mark as a copyright. That’s incorrect. Copyright has nothing to do with the source of a particular product or service, but rather protects the expression of, say, the actual words in your book. Copyright typically doesn’t protect book titles or series titles. People often confuse copyrights and trademarks because they’re both intellectual property rights and because e-booksellers like Amazon have systems in place for rights-holders to send notices to Amazon asking for infringing works to be removed from sale (“notice and takedown” systems). If you’re confused about the difference, again you might find the blog post linked here useful.