Too General To Be Trademark-Able: A “Cocky” Debate

There have been plethora of cases in India and abroad that discuss the menace caused due to monopolization of general English terms in course of business. The argument given by the proprietors is that to get a trademark over a name, it is important that the name is arbitrary and it does not describe the product that is being sold under it. While the importance of getting protection over one’s intellectual property is stressed upon, the bigger problem here lies with the concept of owning a name that everyone knows and uses in their day-to-day life. “Trademark Overreach or Trademark Abuse” refers to this practice of using and monopolizing general words as brand names. This article analyses the predicament of dominating general words for business purposes while highlighting upon the recent ‘COCKY’ controversy.

The COCKYGATE:

After Penelope Ward and Vi Keeland’s book ‘The Cocky Bastard’ became a major hit in 2015, number of romance novelists titling their books ‘Cocky’ was on the increase. The word is adored by these novelists for its implication to alpha-male heroes and for its under-playing potential. On 17th April 2018, the United State Patents and Trademark (USPTO) invited litigation when it granted a troublesome trademark on the general English word “COCKY”. Crux of the matter is that, self-published author Faleena Hopkins had filed for registration of trademark on the word “Cocky” in relation to a series of downloadable e-books in the field on romance, ‘Cocker Brothers of Atlanta’. The 19 book series is about Cocker brothers where each book features the word ‘Cocky’ in the title (books in the series can be viewed here Cocker Brothers Series). Adding fuel to the fire, Ms. Hopkins also wrote out to other authors to cease and desist from using the word in their book titles. Many authors like Jamila Jasper, Bianca Somberland have received notices from Ms. Hopkins stating that they should change the name of their books or else face legal actions. She also filed a complaint against these authors with Amazon as a consequence of which Amazon took down their books from sale. The matter came to light last week when many authors resorted to social media to write about the letters received from Ms. Hopkins with #COCKYGATE. The actions of Ms. Hopkins had led to an outcry in the romance writers’ community.

A petition to cancel the registration of ‘Cocky’ has been filed in the USPTO which has been signed by 17,000 people so far. The writers have claimed that romance novels usually involve alpha-male protagonists who are frequently described in the titles with this word. They also claimed that such generic terms cannot be trademarked. In her defense, Ms. Hopkins claims that ‘COCKY’ is an essential part of the titles of her books, hence, require protection. She said that she is received letters from the readers who lost their money thinking they bought her series. She stated that she is trying to protect the interests of such innocent buyers.

Analysis:

As stated earlier, general terms are not trademark-able. General terms refer to the terms or words that we use regularly in our day-to-day affairs or which are words of common tongue. General term is a term which ideally should not become the exclusive property of a single firm but at the same time it maybe a term which describes the source of a product or service provided under it; therefore, must not be appropriated by the rivals to use freely. Such terms cannot be trademarked unless they have attained a secondary meaning. A trademark claim may be overreaching if a mark similar to the registered mark comprised of a general term is separately registered and used in relation to a different class of goods. The court must not deny the defendants from using the general trademarked term unless it has acquired secondary distinctiveness.

Secondary Distinctiveness: An American Overview:

Federal Trademark Act, 1946 popularly known as the ‘Lanham Act’ governs the trademark law in the United States.  The act allows the owners of trademarks and service marks to register them on Principal Register. The refusal of registration is constrained to certain grounds enumerated in Section 2(a), (b), (c), (d) and (e) which includes grounds like mark being deceptively similar to another mark already registered, consists of immoral, deceptive or scandalous matter etc. This section is the American counterpart of Section 9 of the Indian Trademark Act, 1999, however, Section 2(f) of the Lanham Act provides an exception to refusal of registration on grounds of section 2(a), (b), (c), (d) and (e) (3), (e) (5). It states that “nothing herein shall prevent the registration of a mark used by the applicant that has become distinctive of the applicant’s goods in commerce”, thus, in US too, a general term can acquire protection only if the term has acquired a secondary meaning.

The Judicial outlook on this matter in United States is also in consonance with what the Act most states. Commonly descriptive terms or general terms used by the public or other businesses to describe a particular good cannot be trademarked unless it has acquired a distinctive meaning, in the sense that the public associates the term to a particular product of a particular company. Yet, there have been cases like the CITI Bank’s matter against AT&T over the term “THANK YOU”. The court sided with the defendants and stated that the term had achieved no secondary meaning, hence, CITI Bank cannot monopolize it.

Secondary Distinctiveness: Indian Perspective:

Section 9 of the Trademark Act, 1999 lays down the grounds for absolute refusal of registration of trademark and includes that a mark that is descriptive of the goods and services purported to be sold under it cannot be registered. It also bars registration of marks which have become customary in the current language or in bona fide and established practices of trade, however, the section gives an important exemption to the marks that have acquired distinctive character as a result of their use maybe registered. The exemption gives birth to the idea of ‘secondary distinctiveness’ which relates to the situation where certain terms acquiring a secondary meaning because of its use in the common parlance; such terms may be trademarked.

Examples of trademark overreach in India are many ranging from Ultratech’s claim over the term ‘Ultra’, or Reebok’s claim over the phrase ‘I am what I am’. In all these cases, the court ratio emphasized on the fact that a general term can be granted protection if and only if it is proven that the term has acquired distinctiveness and that public relate to the term by this secondary meaning rather than a definite meaning.

Conclusion:

In the present case also, the USPTO must take into consideration the genericness of the term ‘Cocky’ and the manner in which it is used by romance novelists in their titles. Generic terms should not be allowed to be trademarked unless there is proof of its acquired distinctiveness. The evidence of secondary distinctiveness must be made mandatory for those seeking to register generic terms as trademarks. Further while entertaining infringement suits involving such generic terms the Courts should be cautious to identify if the claim is bona fide; meaning, the generic term trademarked by the Plaintiff has attained a distinctive character and the public at large associates such term with the products of the Plaintiff.

Author: Aishwarya M. Pande, 5th Year, BA LLB (IPR Hons.), Institute of Law, Nirma University, Ahmedabad, Legal Intern at  Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at pratistha@iiprd.com.

References:

[1] Trademark Registration no. 5447836 granted by USPTO

[2] http://tsdr.uspto.gov/#caseNumber=5447836&caseSearchType=US_APPLICATI

ON&caseType=DEFAULT&searchType=statusSearch

[3] Section 2, Federal Trademarks Act, 1946

[4] Section 9, Indian Trademarks Act, 1999

[5] https://timesofindia.indiatimes.com/life-style/books/features/romance-novelist-trademarks-word-cocky-stirs-up-controversy/articleshow/64108602.cms

[6] https://www.vox.com/culture/2018/5/15/17339578/cockygate-explained-romance-publishing-faleena-hopkins

[7] http://www.victoriastrauss.com/2018/05/09/trademark-shenanigans-weighing-in-on-cockygate/

[8]http://www.cbc.ca/radio/asithappens/as-it-happens-wednesday-edition-1.4665345/romance-writer-renames-book-after-author-trademarks-cocky-1.4665355

[9] James M. Treece and David Stephenson, ‘Another look at descriptive and generic terms in American Trademark Law.’,  66 Trademark Rep. pp 452,453

[10] Ultratech Cement Ltd. v. Dalmia Cement Bharat Ltd., (2015) 2 Mah LJ 354 (Bom)

[11] Reebok India Co. v. Gomzi Active, MANU/KA/0781/2006

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