The registration covers a book series, not an individual book.
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.
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.
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.
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.
Yes, that’s pretty much the definition of a trademark—a distinctive sign that indicates the source of goods or services.
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.
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.
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.
No, it’s not difficult. It’s impossible. You must show a likelihood of confusion in order to establish trademark infringement.
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.
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.
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?
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.
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.
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.
That’s the pull between traditional typesetters and those Johnny-come-latelys who do everything electronically. Once upon a time, “typeface” referred to a particular style of type, which could come in a variety of sizes, weights, and italizations; “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.
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.
“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.
“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.
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.