How to track and fight bad trademarks — guest kevin kneupper jami gold, paranormal author electricity load profile


A few weeks ago, I wrote about #cockygate, which highlighted a few of the mistakes made by an author attempting to trademark the word cocky. The worst issue is that she acted like she owned the word, when in fact, trademarks only allow the holder to prevent others from using the word in a way that would deceive others about the source of a product or service.

Although RWA and a few lawyer-heroes are on the case to dispute that trademark, other trademark trolls have been following in her footsteps, seeing what they can get away with. Those following the issue have already fought back against trademark applications for the words rebellion (which attempted to lay claim to the word for almost every product on the planet) and LitRPG (attempting to trademark a whole book genre?).

Just yesterday, a bizarre story spun across social media about a trademark application for the word forever in relation to fiction for books, ebooks, and audio books. The author claims she didn’t authorize the application, but her agent (who also acts as a lawyer) now says her client is canceling the application anyway. So, yay?

Worried about bad trademarks? @kneupperwriter and @cockybot are here to help! Click To TweetRegardless of whether said author and agent had a costly miscommunication (given the filing fees) about what the author did want trademarked, or they’re backtracking after the swift backlash, the hubbub proved that the writing community has learned from #cockygate.

One thing to keep in mind is that the overworked U.S. Patent and Trademark Office tends to approve most applications and lets the courts figure out which ones don’t make sense later. That is, the granting of a trademark implies nothing about its legitimacy.

• After publication, any party who believes it may be damaged by registration of the mark has 30 days to file an Opposition to Registration. (Opposition proceedings are like mini-trials to prove the USPTO made an error, and a lawyer may be necessary—that is, this process is less likely to be free or easy.)

An easy—and effective—way to hear about trademark applications as soon as they receive an application Serial Number and start the examination process is to follow a bot on Twitter. One of the best innovations to come out of #cockygate is @cockybot.

“CockyBot is a Twitter bot that scans the US Patent and Trademark Office’s database for recent applications to register trademarks relevant to authors of fiction. … Initially – as the bot’s creation was inspired by #cockygate – its focus was on romance novels, but its search has now expanded to include other genres of fiction as well…

The bot searches for active applications for trademarks or collective marks containing relevant terms in the description of goods and services covered by the mark. The search is limited to applications with classes that cover books, ebooks, novels, and short stories…”

Let’s check in with #cockygate’s author-lawyer-hero for his expert advice on how to file a Letter of Protest with the USPTO if you see a trademark you think is illegitimate (on @cockybot or otherwise). Like us, he’s coming from a writer’s perspective, but the same steps would apply to any industry.

If you haven’t followed #cockygate, @cockybot is an account designed to automatically flag trademarks that may apply to novelists so they can look and see if they’re crazy. It’s the first line of defense against trademark trolls—a twitter account that tells us what’s filed.

Will a trademark application negatively affect you? Here’s how to protest… Click To Tweet The PTO has a short guide on what to do with Letters of Protest, and you will want to read it if you’re filing one. A more lawyerly guide can be found in the Trademark Manual of Examining Procedure.

See a sketchy trademark application? File a protest with these 4 steps Click To TweetNote first that there is no letter from anybody other than somebody else at the PTO. Why? Because they wall off the examiner. So if you make your letter some big rant, don’t bother—it’s just going to get deleted and only the materials you attach will be sent.

And then if you look at the materials attached, they are a good guide to the kinds of things you could include. Searches on Amazon, Goodreads, etc. showing generic/descriptive use of the term. Wikipedia type materials explaining what it is and how it’s used.

As a side note, please do not challenge “Be The Hamster.” I discourage this both because in my learned opinion that is likely a valid mark, as well as because there is nothing I would like to see more than everyone making their snow cones by running in giant hamster wheels.

So let’s say “Be The Hamster” comes up on HamsterBot, the trademark bot for the costumed rodent industry. You are in an uproar. This phrase is used throughout the human-powered food industry. Slurpees, hot dogs, vegetable slicers—all have used the term for their giant wheels.

And worse than that, now “Be The Hamster” is covered for virtually every small mammal’s costumes. Rats, kangaroos, wallabies, gerbils and the like—the entire industry uses this phrase when putting adorable costumes on them and forcing them to make snow cones. Step 2: Check the Trademark Status

Compare this to one that has already been published: Hamsters With Moustaches. Note here the highlighting—for this trademark, the database shows a publication date. Too late, sorry—you cannot file a Letter of Protest or put a moustache on your hamster.

They say that long ago, there was a rebellion in Heaven. That an army of angels sought to seize the throne, and were cast down into the pits of Hell in punishment. But there’s been another uprising, and another Fall. Cast down to Earth, the rebel angels ravaged the globe in an orgy of sin and violence as they indulged in their newfound freedoms. Their new home is the Perch, a black, towering monstrosity that blights what’s left of the New York City skyline.

Life inside the Perch means you watch your tongue, if you’re a servant. Jana has lived there since she was a child, and now she’s found herself thrust into the middle of angelic politics. Some of them want to torture her, just for the fun of it. Others say they want to protect her. And Rhamiel, a charismatic and powerful angel with one of the few faces that wasn’t burnt and scarred by the Fall, is relentlessly pursuing her affections.

Life outside can be just as dangerous. Strange things fell with the angels and wander the countrysides. The roads are filled with Vichies, cringing humans who’ve thrown their lot in with their oppressors and won’t hesitate to take advantage of the weak. But some are still fighting, including William Holt. He leads a small cell of fighters, searching for a way to strike back against the angels without getting themselves killed in the process.