'Trademark squatting' hurts artists and small businesses and it's coming to Canada

If you come up with a clever name for your business, you'll probably want to trademark it. It gives you legal protection if someone else tries to copy you. However, the use of trademarks to protect basic words led to disputes south of the border and may soon cause problems in Canada.

Romance novelist Jamila Jasper recently found herself at the centre of a trademark controversy. After releasing a book titled Cocky Cowboy, she received what appeared to be a cease and desist letter via email from fellow romance author Faleena Hopkins.

"[She] asked me to change my title and unpublish my book and republish it with a new title and cover because she had just filed a trademark for the word 'cocky' and she said that I was in violation of that trademark," said Jasper.

The letter went on to say Hopkins could seize all Jasper's prior earnings and future earnings if she didn't change the title and cover of the book, according to Jasper.

"I had to pay to get a cover redesigned very quickly. So it was a rushed job, which costs more," said Jasper. "I also was unable to republish my paperback because it's too expensive to change all of that stuff for me as a smaller, independent author."

Her book is now called The Cockiest Cowboy to Have Ever Cocked. The dispute generated international attention, resulting in the social media hashtag #cockygate. At the core was a simple question: how can someone own the rights to a word many of us use?

Not the first controversy of its kind

An application was filed with the United States Patent and Trademark Office to protect the use of the word "rebellion" by the U.K.-based video game company of the same name. The trademark covered a lot more than video game titles, including books, and angry authors around the world started the hashtag #rebelliongate.

Rebellion CEO Jason Kingsley has since said he would look into why the trademark application was so wide-reaching.  

"It's actually not uncommon for people to try to use and register single words as trademarks," said Alison Hayman, a Canadian lawyer and trademark expert. "For example, you think of Roots in the Canadian context for apparel, Apple, Amazon, etc. The problem arises when people try to get a monopoly on words that are used by others."

Legislative changes could lead to increased trademark disputes in Canada

Changes coming to Canada's Trade-marks Act next year could see more people making attempts to trademark basic words. At the moment, if you trademark a word, it has to be used. Effective next year, you can own the trademark to a word even if you aren't using it.

"This particular change, the elimination of the use requirement, has been very controversial," said Hayman. "There's some concern that it's going to lead to an increase in trademark squatting—people filing applications with no real intention to use it."

Trademark squatters aim to block others trying to file legitimate trademarks and to sell the registration back to them at a premium. The practice is common with internet domains and, according to Hayman, is already happening with trademarks.

The elimination of the use requirement has been very controversial. There's some concern that it's going to lead to an increase in trademark squatting.- Alison Hayman

"There's an individual who has filed several hundred trademark applications for very straightforward simple words for a very long list of goods and services and my understanding is this is something that is of concern not only to trademark practitioners but also to the Canadian Intellectual Property Office."

For Jasper, the whole concept is ridiculous and too all-encompassing.

"If everyone picked a word and trademarked a single word, we'd be pretty limited with the funny puns we could make."

Though the changes to Canada's Trade-marks Act haven't been given an official date yet, Hayman expects it will be sometime early in 2019.