There are some things that are terrible ideas. In the realm of trademarks, #cockygate definitely qualifies. #Cockygate refers to self-published author Faleena Hopkins’ decision to obtain a federal trademark registration for “cocky” for romance novels and then send cease and desist letters to some of her competitors. The reason for the letters? Like many romance writers, the letter recipients used “cocky” in the titles of their books. Eventually, a TTAB cancellation was filed against Hopkins’ registrations. Hopkins responded by filing a federal lawsuit against the lawyer who filed the cancellation petition, a writer who used “cocky” in the titles of books, and the publicist for a collection of short stories entitled “Cocktales” that was written by various romance authors in protest of Hopkins’ behavior. After a federal judge found Hopkins failed to show she was likely to succeed on the merits of her suit and denied her request for a preliminary injunction, the suit settled. Hopkins surrendered the trademark registrations.
Trademark law is designed to protect brands. Terms that are commonly used to fairly describe or identify a particular thing for what it is are not brands. To use the Trademark Attorney Favorite Example, no one may trademark “apple” for apples, and manufacturers of apple juice are free to describe their juice product as “apple juice.” The term “apple,” however, may be used to brand products unrelated to apples, such as computers.
The question many authors are asking in light of #cockygate is – can an author have a trademarked brand and, if so, when?
Authors looking to build a brand should keep several things in mind. First, consider the purpose of a brand. Brands answer the customer’s question: Who is the source of this product I am buying? A brand, therefore, needs to identify a single source. Often, in the world of authors, the author’s name does this far more than the any particular title. That does not mean an author cannot have a separate brand. It does, however, mean that selecting that brand needs to be done with purpose and planning, and the brand must be used consistently and exclusively by the author. As discussed above, the brand selected should not identify or describe the product. The best brands are arbitrary; there is not an immediate rational connection between the brand and the product (like “apple” and “computers”).
Brands are easier to build and provide greater protection when they are unique. For a trademark to be protectable, it must be exclusively used by the source user. Even if a trademark is used only by one user, there still may be similar uses made by others. Depending on the scope of use, these similar trademarks can cause a mark to be considered “weak” (in which case it can only protect against a very small number of infringing uses). Trademark weakness arises from customers seeing the same words or phrases so often from many different sources that they learn to discount those words and phrases and look to other things to identify the source of what they’re purchasing. In some cases, similar use by others may even prevent a mark from being protectable. “Cocky” for romance books, for example, was not a good idea for mark, as the term is commonly used in romance book titles and with romance story archetypes. Customers and prospective customers are used to seeing many different authors writing stories with “cocky” in the title or on the related “swag.” As a result, they are not likely to understand “cocky” as designating a single source of products.
A brand should also be marketed as a brand. It is important to remember that, in the world of books, a brand is not the title of a single book. The title identifies the story, not the source. A consistently branded series, however, can be a trademark. For example, The Magic School Bus series is the subject of U.S. Trademark Registration No. 1,714,213. While each book has a unique title (The Magic School Bus Lost in the Solar System; The Magic School Bus Explores the Senses; The Magic School Bus Inside a Hurricane; etc.), they are marketed collectively as the “Magic School Bus Series.” Branding, however, should not end there. Authors seeking to build a unique brand should brand their website, blog, and social media pages with their brand. Give away products (“swag”) and for-sale merchandise like bookmarks or T-shirts should also be offered under the brand.
Finally, a brand should be used consistently. Changing the font, logo, or other visual presentation can dilute the impression a brand creates. In contrast, when the brand is presented in the same format each time, it is easier for a customer or prospective customer to remember.