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On Fighting Frivolous Trademarks, Part 3: Gaming the System

Last updated on May 29th, 2020

This post is part of a 12-part series that examines why so many frivolous trademarks are registered, how it affects the print-on-demand industry, and what you can do to help. In this post, you’ll learn the purpose of trademark and why most T-shirt slogans don’t really qualify (yet trademark trolls and bullies still get them registered). (To see an overview of the series, go to the “At the Beach” poem introduction or scroll to the bottom for an ordered list of posts.)

Frivolous Trademarks: Gaming the System

Do you have a favorite book?

I’ve got lots.

One of my favorites is the Trademark Manual for Examining Procedure (“TMEP” for short), and it’s fascinating!

Another is a book-length Iowa Law Review article by a law school professor and my hero, Dr. Alexandra J. Roberts, entitled Failure to Function. Again, fascinating!

And guess what? They’re both FREE online THIS WEEK! Who knows when they’ll start charging for ’em, so make time to read them now!

(Is my “scarcity” pitch working? Wink wink!)

Purpose of the Trademark Act (The Lanham Act): To Register Trademarks

I know you’re busy, so here are some of my favorite quotes from these oughta-be-a-best-sellers:

First, from Dr. Roberts:

The Trademark Act is not an act to register mere words, but rather to register trademarks. Before there can be registration, there must be a trademark, and unless words have been so used they cannot qualify. Thus, it is essential for registration that words first become a trademark.

Alexandra J. Roberts, Failure to Function, 104 Iowa L. Rev. 1977 (2019) [at Footnote 36]

And here are some highlights from the TMEP:

Terms and expressions that merely convey an informational message are not registrable…

the phrase I ♥ DC on apparel and other souvenirs, whether displayed in a stacked or horizontal format would be not be perceived by as a trademark but rather as “an expression of enthusiasm for the city of Washington, DC”…

ONCE A MARINE, ALWAYS A MARINE would not be perceived as a trademark but rather as an informational slogan “to express support, admiration or affiliation with the Marines”…

Use of a widely-used informational message in a traditionally source-identifying manner does not overcome the informational nature of the wording itself…

use of I ♥ DC in a manner that is “conventional for the display of trademarks” is not sufficient for the informational message to act as a source identifier…

The critical inquiry in determining whether a designation functions as a mark is how the designation would be perceived by the relevant public.

Trademark Manual for Examining Procedure, 1202.04 Merely Informational

That’s a lotta words to say, The Trademark Act was not written so you could register every combination of words under the sun for “your” trademarked slogans. It’s for registering trademarks.

And, if you followed the link to Sherinian Law’s Brief History of Trademarks, you learned the purpose of a trademark is basically to guarantee the source or producer of some service or product.

And yet…

Novelty Producers are Gaming the System

The practice of registering T-shirt slogans as trademarks has become commonplace. Several US owners have secured 20-100 frivolous trademarks each, and one UK/Australian company owns at least 80.

This is not the purpose of trademark registration.

That’s not to say that all these T-shirt slogan trademarks are registered by trolls. Some owners are like “Fearful Frank,” trying to safeguard their right to sell a profitable design. Others are bullies trying to corner the market for the phrases on their best-selling products.

And then there are companies who license phrases to others (Life Guard Licensing Corp., for example).

Still, it’s a problem. And what makes it worse is, the real trolls are getting sneakier. See, USPTO has made some strategic changes to help catch ineligible applications and faulty registrations. (Specialized training, mock-up specimen reports, and random audits will be discussed in Part 6.)

Newest Tactic: “Seed” Trademarks

Trolls are figuring out, hangtag specimens don’t work as well as they used to. So some of them are switching to a new tactic: seed their trademark empire by starting with an application to register in an “easier” class. Then add clothing later.

A Trademark “Stamp” given in one trademark class 
Makes getting swords easy, you just have to ask.

A trademark may be perfectly registrable in class 009 (computers) and perfectly ineligible in class 025 (clothing). But, once it’s registered the first time, it’s a lot easier to add another registration.

After all, “This term has already been registered as a trademark, which proves it functions as a trademark.” In Part 10 I’ll show you some real-life, glaring examples that prove this is false.

A Typical Seed Trademark Progression

The progression may look like this:

  • Application 1: IC 009 – computers or an app for mobile phones
  • Application 2: IC 009 – PopSockets
  • Application 3: IC 025 – T-shirts

The more registrations an owner has for a single term, the more the system leans toward saying “Yes” to as many more as they want. The examples in Part 10 will show why this is very bad.

The motive doesn’t really matter. The outcome is the same. The novelty gifts and apparel industry is becoming a bloody game of who can be first to register the latest slogan or self-identifying label (MAMA BEAR, LITTLE SISTER, GIRLBOSS, FUNCLE, BOYMOM).

Never mind consumer perception or how these registrations eliminate legitimate competition and hinder free markets.

There’s money to be made, and they are making it.

Failure to Function: No Easy Answers

Further complicating matters, some self-identifying labels do function as trademarks.

As Dr. Alexandra Roberts points out in Failure to Function, the question of a mark’s validity must be answered based on both descriptiveness and use as a trademark.

“Yaya” is a nickname for grandma, nanny, caretaker, soul-sister, and who knows what else.

My print-on-demand friends will be sad that – due to necessarily-strict IP policies at Amazon and Etsy – they can’t use this term on a “Gift Shirt for Yaya Grandma.” That’s an issue that can’t be solved at present, and it’s not the focus of this series.

The specimens for this mark (YAYA, SN 86504608) show proper trademark use and it is distinctive in the context of clothing brands. Here is one of the seventeen specimens submitted:

YAYA Specimen (SN 86504608)

This is Part 3 of a 12-part series about the threat and impact of frivolous trademarks. The other posts will be linked below:

To see the full threat and impact of frivolous trademarks, read the rest of this 10-part series.

Part 1: At the Beach (the poem overview)

Part 1b: Overview (why I got involved))

Part 2: Define Frivolous Trademark

Part 3: Gaming the System

Part 4: Print on Demand a Growing Industry

Part 4b: How Amazon Drives Frivolous Trademarks

Part 5: Misguided Creatives and Trademark Attorneys (the Current System)

Part 5b: Ornamental Refusals and Red Oceans

Part 5c: USPTO Started It

Part 5d: "Life is Good" Lawsuits

Part 5e: Keep Calm and Slogan On

Part 6: USPTO Issues and Efforts

Part 7: Letter of Protest Challenges and Results

Part 8: Letter of Protest Lessons

Part 9: System Bias