# A cocky cock-up **URL:** \ **Category:** Cafe Society\ **Created:** [May 11, 2018, 3:28pm UTC](https://boards.straightdope.com/t/a-cocky-cock-up/813996 "2018-05-11T15:28:05Z")\ **Posts on this page:** 20\ **Page:** 2
**Author:** ![RealityChuck](https://sea3.discourse-cdn.com/straightdope/user_avatar/boards.straightdope.com/realitychuck/32/195_2.png) [@RealityChuck](https://boards.straightdope.com/u/RealityChuck)\ **Post date:** [May 14, 2018, 12:15am UTC](https://boards.straightdope.com/t/a-cocky-cock-up/813996/21 "2018-05-14T00:15:10Z")
[Here’s a discussion](https://accrispin.blogspot.com/2018/05/trademark-shenanigans-weighing-in-on.html), with an IP lawyer weighing in. Some points: 1. The registration covers a book series, not an individual book. 2. To be enforceable, a trademark has to have what’s called a “source identification function,” which seems to mean that the usage in violation has to refer to the trademarked item in some manner. 3. As an example, the lawyer says that if you write a book called “The Apple Tree,” Apple Computer has no trademark case, since the word is being used in an ordinary, English language use of the term. 4. The people holding the trademark has to prove that a person seeing “Cocky” would be confused into thinking it was their book instead of seeing it as just using the word. As the lawyer says, “Without that likelihood of consumer confusion, proving trademark infringement is very difficult.” Given that, it’s unlikely the claim on trademark infringement is going to hold up. ---
**Author:** ![Acsenray](https://sea3.discourse-cdn.com/straightdope/user_avatar/boards.straightdope.com/acsenray/32/4519_2.png) [@Acsenray](https://boards.straightdope.com/u/Acsenray)\ **Post date:** [May 14, 2018, 12:33am UTC](https://boards.straightdope.com/t/a-cocky-cock-up/813996/22 "2018-05-14T00:33:20Z")
> [@RealityChuck](#): > > [Here’s a discussion](https://accrispin.blogspot.com/2018/05/trademark-shenanigans-weighing-in-on.html), with an IP lawyer weighing in. > > Some points: > > 1. The registration covers a book series, not an individual book. Yes, it has to because the title of a single work is by definition not a trademark, but a trademark can cover a series of books from the same source. > [@](#): > > 1. To be enforceable, a trademark has to have what’s called a “source identification function,” Yes, that’s pretty much the definition of a trademark—a distinctive sign that indicates the source of goods or services. > [@](#): > > which seems to mean that the usage in violation has to refer to the trademarked item in some manner. Not quite. The plaintiff has to show that the defendant’s usage “creates a likelihood of confusion” in the marketplace as to the source of the goods or services. > [@](#): > > 1. As an example, the lawyer says that if you write a book called “The Apple Tree,” Apple Computer has no trademark case, since the word is being used in an ordinary, English language use of the term. That’s not quite right. It’s because the title of the book “The Apple Tree” doesn’t serve a trademark function, and even if it did, it’s very unlikely that anyone is going to think it comes from the same source as Apple computers. > [@](#): > > 1. The people holding the trademark has to prove that a person seeing “Cocky” would be confused into thinking it was their book instead of seeing it as just using the word. To be precise, the consumer must be confused into thinking or assuming that “Cocky _X_” is from the same source that produced the Cocky Series books, because that’s what “Cocky _X_” as a title of romance books means to the consumer. > [@](#): > > As the lawyer says, “Without that likelihood of consumer confusion, proving trademark infringement is very difficult.” No, it’s not difficult. It’s impossible. You _must_ show a likelihood of confusion in order to establish trademark infringement. > [@](#): > > Given that, it’s unlikely the claim on trademark infringement is going to hold up. This conclusion is not supported by what you have written above. What you’ve written just sets out the standards for showing trademark infringement. It doesn’t really say how likely it is that Faleena Hopkins is going to be able to meet those standards. It’s actually quite plausible that romance readers would come to learn over time that a romance novel with a title of the form “Cocky _X_” comes from the same source as the Cocky Series novels. Why not? The words “Star Wars” are just ordinary words, but as soon as Lucasfilm started producing more “Star Wars” films, the public learned very quickly that they were all from the same source. That established the trademark rights. So this is really a question of fact, that casual observers like us can’t really resolve. Should this go to court, Faleena Hopkins is going to have to prove that her target demographic—romance novel readers—will make the assumption that “Cocky _X_” is one of her books. We don’t know whether that’s true or not. It’s up to her to prove it. But sitting here, we have no idea whether she is going to be able to prove it. ---
**Author:** ![Isamu](https://avatars.discourse-cdn.com/v4/letter/i/7c8e57/32.png) [@Isamu](https://boards.straightdope.com/u/Isamu)\ **Post date:** [May 14, 2018, 1:12am UTC](https://boards.straightdope.com/t/a-cocky-cock-up/813996/23 "2018-05-14T01:12:15Z")
> [@gnoitall](#): > > “you can license my legally-mandated monopoly if you pay me,” legally extorting a cut of some legitimate creator’s earnings. Trademark can’t be used that way. Actualy you can. Depends on which country you’re talking about. ---
**Author:** ![Acsenray](https://sea3.discourse-cdn.com/straightdope/user_avatar/boards.straightdope.com/acsenray/32/4519_2.png) [@Acsenray](https://boards.straightdope.com/u/Acsenray)\ **Post date:** [May 14, 2018, 2:16am UTC](https://boards.straightdope.com/t/a-cocky-cock-up/813996/24 "2018-05-14T02:16:45Z")
> [@BigT](#): > > If it’s not restricted to a particular font, then shouldn’t prior use be a reason to invalidate it? No, prior use is not an issue in trademark law. _Senior_ use can be, however. That is, if two parties are using a particular trademark in a way that causes confusion, then the senior user trumps the junior user. But if Faleena Hopkins is the only person using “Cocky _X_” as a trademark for a particular class of goods, then the fact that other people have used it in a _non_-trademark fashion doesn’t matter. ---
**Author:** ![Isamu](https://avatars.discourse-cdn.com/v4/letter/i/7c8e57/32.png) [@Isamu](https://boards.straightdope.com/u/Isamu)\ **Post date:** [May 14, 2018, 1:11pm UTC](https://boards.straightdope.com/t/a-cocky-cock-up/813996/25 "2018-05-14T13:11:40Z")
> [@Acsenray](#): > > No, prior use is not an issue in trademark law. > > _Senior_ use can be, however. That is, if two parties are using a particular trademark in a way that causes confusion, then the senior user trumps the junior user. I’m not really understanding you here. What do you mean by prior use and senior use? Is it the difference between in which is used first and which is registered first? ---
**Author:** ![MrDibble](https://sea3.discourse-cdn.com/straightdope/user_avatar/boards.straightdope.com/mrdibble/32/114_2.png) [@MrDibble](https://boards.straightdope.com/u/MrDibble)\ **Post date:** [May 14, 2018, 8:11pm UTC](https://boards.straightdope.com/t/a-cocky-cock-up/813996/26 "2018-05-14T20:11:12Z")
> [@GreenWyvern](#): > > There is obviously a comma missing. It should be “…font, style, size, or color.” Shoulda, coulda, woulda - the \*actual \*application text has no comma there, nor does the registration. Agencies aren’t mind readers, or shouldn’t be - that’s what was applied for, that’s all that should be enforced - assuming the numerous cancellation appeals don’t go through, which they likely will. ---
**Author:** ![GreenWyvern](https://sea3.discourse-cdn.com/straightdope/user_avatar/boards.straightdope.com/greenwyvern/32/2834_2.png) [@GreenWyvern](https://boards.straightdope.com/u/GreenWyvern)\ **Post date:** [May 15, 2018, 6:22am UTC](https://boards.straightdope.com/t/a-cocky-cock-up/813996/27 "2018-05-15T06:22:42Z")
I looked a bit further into the “standard character claim”, and I was wrong about a missing comma. They _do_ mean ‘font style’, and they are saying nothing about the ‘font’, which they refer to as ‘typeface’ in their fuller documentation. They say that the text submitted for a standard character mark will automatically be converted to a ‘standardized typeface’. > [@](#): > > 807.03(a) Requirements for Standard Character Drawings > > A standard character drawing must show the mark in black on a white background. An applicant may submit a standard character drawing if: > > ``` > The mark does not include a design element; > All letters and words in the mark are depicted in Latin characters; > All numerals in the mark are depicted in Roman or Arabic numerals; > The mark includes only common punctuation or diacritical marks; and > No stylization of lettering and/or numbers is claimed in the mark. > > ``` > > 37 C.F.R. §2.52(a) . > > If the applicant files an application on paper that includes a standard character claim, the applicant may depict the mark in any font style; may use bold or italicized letters; and may use both uppercase and lowercase letters, all uppercase letters, or all lowercase letters, since no claim is made to any particular font style, size, or color. However, the USPTO will convert applicant’s depiction of the mark to a standardized typeface for printing in the Official Gazette and on the registration certificate. If filing electronically via the Trademark Electronic Application System (“TEAS”), the applicant may neither depict the mark in any particular font style nor use bold or italicized letters. TEAS will automatically convert any wording typed into the standard-character field to a standardized typeface. > > Superscripts, subscripts, exponents, or other characters that are not in the USPTO’s standard character set ( see TMEP §807.03(b) ) are not permitted in standard character drawings. In re AFG Indus. Inc. , 17 USPQ2d 1162, 1163-64 (TTAB 1990) (holding that a special form drawing is required for a drawing featuring a raised numeral). The degree symbol is permitted. > > Underlining is not permitted in a standard character drawing. > > Standard Character Claim Required. An applicant who submits a standard character drawing must also submit the following standard character claim: > > ``` > The mark consists of standard characters without claim to any particular font style, size, or color. > > ``` > > This statement will appear in the Official Gazette and on the certificate of registration. > **[WIPO Lex](https://www.wipo.int/wipolex/en/text/431106)** > > Manual of Patent Examining Procedure Trademark Manual of Examining Procedure Trademark Manual of Examining Procedure Foreword Introduction Change Summary Instructions P If anyone wants to try reading through the entire Trademark Manual of Examining Procedure, good luck to you! It’s over 750,000 words. ---
**Author:** ![MrDibble](https://sea3.discourse-cdn.com/straightdope/user_avatar/boards.straightdope.com/mrdibble/32/114_2.png) [@MrDibble](https://boards.straightdope.com/u/MrDibble)\ **Post date:** [May 15, 2018, 9:34am UTC](https://boards.straightdope.com/t/a-cocky-cock-up/813996/28 "2018-05-15T09:34:56Z")
> [@GreenWyvern](#): > > They say that the text submitted for a standard character mark will automatically be converted to a ‘standardized typeface’. Yes - _for their gazette_. They’re saying they’re not going to use the actual registered mark in their own documentation. They’re _not_ saying that the registration covers that standardized typeface. ---
**Author:** ![GreenWyvern](https://sea3.discourse-cdn.com/straightdope/user_avatar/boards.straightdope.com/greenwyvern/32/2834_2.png) [@GreenWyvern](https://boards.straightdope.com/u/GreenWyvern)\ **Post date:** [May 15, 2018, 9:56am UTC](https://boards.straightdope.com/t/a-cocky-cock-up/813996/29 "2018-05-15T09:56:13Z")
> [@MrDibble](#): > > Yes - _for their gazette_. They’re saying they’re not going to use the actual registered mark in their own documentation. They’re _not_ saying that the registration covers that standardized typeface. The registration is for the text, irrespective of the typeface or formatting. That’s what standard character claim means. ---
**Author:** ![Isamu](https://avatars.discourse-cdn.com/v4/letter/i/7c8e57/32.png) [@Isamu](https://boards.straightdope.com/u/Isamu)\ **Post date:** [May 15, 2018, 11:11am UTC](https://boards.straightdope.com/t/a-cocky-cock-up/813996/30 "2018-05-15T11:11:53Z")
Yes when you file a word trademark you can choose to file in stylized characters (eg like the famous cursive Coca Cola design text) or in ‘standard characters’. There is a difference in scope of protection that is sometimes significant. ---
**Author:** ![DesertDog](https://sea3.discourse-cdn.com/straightdope/user_avatar/boards.straightdope.com/desertdog/32/11503_2.png) [@DesertDog](https://boards.straightdope.com/u/DesertDog)\ **Post date:** [May 15, 2018, 1:00pm UTC](https://boards.straightdope.com/t/a-cocky-cock-up/813996/31 "2018-05-15T13:00:09Z")
> [@GreenWyvern](#): > > They _do_ mean ‘font style’, and they are saying nothing about the ‘font’, which they refer to as ‘typeface’ in their fuller documentation. That’s the pull between traditional typesetters and those Johnny-come-latelys who do everything electronically. Once upon a time, “[typeface](https://en.wikipedia.org/wiki/Typeface)” referred to a particular style of type, which could come in a variety of sizes, weights, and italizations; “[font](https://en.wikipedia.org/wiki/Font)” made those specifications. To use the Wiki’s example, ITC Garamond is a typeface, ITC Garamond Condensed Bold is a font (i.e. you’re picking bits of lead out of a box). Then the digital boys with no respect for tradition took over and muddied the waters. ---
**Author:** ![Acsenray](https://sea3.discourse-cdn.com/straightdope/user_avatar/boards.straightdope.com/acsenray/32/4519_2.png) [@Acsenray](https://boards.straightdope.com/u/Acsenray)\ **Post date:** [May 16, 2018, 12:17am UTC](https://boards.straightdope.com/t/a-cocky-cock-up/813996/32 "2018-05-16T00:17:28Z")
> [@MrDibble](#): > > Shoulda, coulda, woulda - the \*actual \*application text has no comma there, nor does the registration. Agencies aren’t mind readers, or shouldn’t be - that’s what was applied for, that’s all that should be enforced - assuming the numerous cancellation appeals don’t go through, which they likely will. As others have pointed out, it’s a standard character mark, so the presence or absence of a comma is irrelevant. It was applied for as a standard character mark, it was issued as a standard character mark, and it’ll be enforced as a standard character mark. If anyone does petition for cancellation, none of the armchair observers here have any idea whether the cancellation will be successful or not. None of you have done any market research to establish whether or not the “Cocky” brand is distinctive for the relevant goods or services. It’s perfectly plausible for a term like “Cocky” to be distinctive. In the same way that “Star Wars” can be distinctive. If there’s a cancellation petition, we’ll see who’s right maybe but the assumption that the registration is preposterous on its face is wrong. ---
**Author:** ![Acsenray](https://sea3.discourse-cdn.com/straightdope/user_avatar/boards.straightdope.com/acsenray/32/4519_2.png) [@Acsenray](https://boards.straightdope.com/u/Acsenray)\ **Post date:** [May 16, 2018, 12:31am UTC](https://boards.straightdope.com/t/a-cocky-cock-up/813996/33 "2018-05-16T00:31:35Z")
> [@Isamu](#): > > I’m not really understanding you here. What do you mean by prior use and senior use? Is it the difference between in which is used first and which is registered first? “Prior use” is a patent concept and is irrelevant in trademark law. In trademark law if two parties are claiming valid trademark rights in a particular term or sign and the use of both created a likelihood of confusion then the question becomes which is the senior use and which is the junior use. All else being equal, the junior user will lose. But in that situation the senior user has to establish valid trademark rights. Unlike the concept of “prior use,” it’s not enough to show that the term or sign simply existed before the junior user’s use. To be a senior user, the term or sign must be your trademark. So on this “Cocky” case, if Faleena Hopkins can establish that “Cocky” is distinctive in the context she is claiming (and the PTO has already decided its distinctive on the first time around, so it’s not easy to get that knocked out), then the only person who can knock out her registration is someone else _who is also using “Cocky” as a trademark in the same market and was using it before Hopkins started using it_. ---
**Author:** ![Acsenray](https://sea3.discourse-cdn.com/straightdope/user_avatar/boards.straightdope.com/acsenray/32/4519_2.png) [@Acsenray](https://boards.straightdope.com/u/Acsenray)\ **Post date:** [May 16, 2018, 12:34am UTC](https://boards.straightdope.com/t/a-cocky-cock-up/813996/34 "2018-05-16T00:34:59Z")
> [@Isamu](#): > > I’m not really understanding you here. What do you mean by prior use and senior use? Is it the difference between in which is used first and which is registered first? “Prior use” is a patent concept and is irrelevant in trademark law. In trademark law if two parties are claiming valid trademark rights in a particular term or sign and the use of both created a likelihood of confusion then the question becomes which is the senior use and which is the junior use. All else being equal, the junior user will lose. But in that situation the senior user has to establish valid trademark rights. Unlike the concept of “prior use,” it’s not enough to show that the term or sign simply existed before the junior user’s use. To be a senior user, the term or sign must be your trademark. So on this “Cocky” case, if Faleena Hopkins can establish that “Cocky” is distinctive in the context she is claiming (and the PTO has already decided its distinctive on the first time around, so it’s not easy to get that knocked out), then the only person who can knock out her registration is someone else _who is also using “Cocky” as a trademark in the same market and was using it before Hopkins started using it_. And no it doesn’t have to with who registered it first. It has to do with who USED it first as a a trademark. ---
**Author:** ![Isamu](https://avatars.discourse-cdn.com/v4/letter/i/7c8e57/32.png) [@Isamu](https://boards.straightdope.com/u/Isamu)\ **Post date:** [May 16, 2018, 2:08am UTC](https://boards.straightdope.com/t/a-cocky-cock-up/813996/35 "2018-05-16T02:08:22Z")
> [@Acsenray](#): > > “Prior use” is a patent concept and is irrelevant in trademark law. > > In trademark law if two parties are claiming valid trademark rights in a particular term or sign and the use of both created a likelihood of confusion then the question becomes which is the senior use and which is the junior use. All else being equal, the junior user will lose. > > But in that situation the senior user has to establish valid trademark rights. Unlike the concept of “prior use,” it’s not enough to show that the term or sign simply existed before the junior user’s use. To be a senior user, the term or sign must be your trademark. > > So on this “Cocky” case, if Faleena Hopkins can establish that “Cocky” is distinctive in the context she is claiming (and the PTO has already decided its distinctive on the first time around, so it’s not easy to get that knocked out), then the only person who can knock out her registration is someone else _who is also using “Cocky” as a trademark in the same market and was using it before Hopkins started using it_. > > And no it doesn’t have to with who registered it first. It has to do with who USED it first as a a trademark. Well, INTA (the International Trademark Association) of which I am a member, doesn’t see it that way. [https://www.inta.org/INTABulletin/Pages/PriorUseofaTrademarkisMoreImportantthanPriorRegistration.aspx](https://www.inta.org/INTABulletin/Pages/PriorUseofaTrademarkisMoreImportantthanPriorRegistration.aspx) ---
**Author:** ![Acsenray](https://sea3.discourse-cdn.com/straightdope/user_avatar/boards.straightdope.com/acsenray/32/4519_2.png) [@Acsenray](https://boards.straightdope.com/u/Acsenray)\ **Post date:** [May 16, 2018, 2:57am UTC](https://boards.straightdope.com/t/a-cocky-cock-up/813996/36 "2018-05-16T02:57:43Z")
> [@Isamu](#): > > Well, INTA (the International Trademark Association) of which I am a member, doesn’t see it that way. > > [https://www.inta.org/INTABulletin/Pages/PriorUseofaTrademarkisMoreImportantthanPriorRegistration.aspx](https://www.inta.org/INTABulletin/Pages/PriorUseofaTrademarkisMoreImportantthanPriorRegistration.aspx) Did you read what the article you linked to says? They might prefer the term “prior use,” but that’s merely a difference in terminology between what I said and what they’re saying. They concept they are applying is exactly as they described it. What they are calling “prior use” is what I call the “senior use.” It’s someone who actually holds trademark rights. ---
**Author:** ![Isamu](https://avatars.discourse-cdn.com/v4/letter/i/7c8e57/32.png) [@Isamu](https://boards.straightdope.com/u/Isamu)\ **Post date:** [May 16, 2018, 3:34am UTC](https://boards.straightdope.com/t/a-cocky-cock-up/813996/37 "2018-05-16T03:34:02Z")
> [@Acsenray](#): > > Did you read what the article you linked to says?. No. I don’t need to. I’m far beyond having to read those kinds of articles. > [@Acsenray](#): > > …merely a difference in terminology between what I said and what they’re saying. . Correct. ---
**Author:** ![Johnny\_Ace](https://avatars.discourse-cdn.com/v4/letter/j/6bbea6/32.png) [@Johnny\_Ace](https://boards.straightdope.com/u/Johnny_Ace)\ **Post date:** [May 16, 2018, 3:44am UTC](https://boards.straightdope.com/t/a-cocky-cock-up/813996/38 "2018-05-16T03:44:19Z")
I’d imagine that the field of authors who would even want to use the word ‘cocky’ in their book titles is going to be very small. “Yes, I’m a serious author! Get my new book, Cocky Around the Clocky!” ---
**Author:** ![tracer](https://sea3.discourse-cdn.com/straightdope/user_avatar/boards.straightdope.com/tracer/32/20578_2.png) [@tracer](https://boards.straightdope.com/u/tracer)\ **Post date:** [May 16, 2018, 4:31pm UTC](https://boards.straightdope.com/t/a-cocky-cock-up/813996/39 "2018-05-16T16:31:22Z")
Back when Zilog made the Z-80 and the Z-8000 microprocessors, they tried to **trademark the letter Z**. Thankfully, cool-enough heads at the PTO prevailed, and their application was rejected. ---
**Author:** ![Darren\_Garrison](https://sea3.discourse-cdn.com/straightdope/user_avatar/boards.straightdope.com/darren_garrison/32/92_2.png) [@Darren\_Garrison](https://boards.straightdope.com/u/Darren_Garrison)\ **Post date:** [May 16, 2018, 5:17pm UTC](https://boards.straightdope.com/t/a-cocky-cock-up/813996/40 "2018-05-16T17:17:22Z")
And Intel tried to trademark CPU part numbers ending in 86. [Previous page](https://boards.straightdope.com/t/a-cocky-cock-up/813996.md?page=1) [Next page](https://boards.straightdope.com/t/a-cocky-cock-up/813996.md?page=3)