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On Fighting Frivolous Trademarks, Part 5a: Misguided Creatives and Trademark Attorneys (The Current 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 why so many T-shirt slogans are registered as trademarks. (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.)

What do you get when you cross unlimited slogans with misguided creatives and give everybody loopholes? An endless parade of faulty trademark registrations.

Misguided Creatives and Trademark Attorneys

One of the challenges USPTO faces is that of the “slogan” applications generated by novelty producers, and the widespread belief that trademark offers nearly unlimited protection for such expressions. Misinformed and misguided creatives seek trademark registration for novelty slogans, hoping to “protect” their products from copycats.

There are already tens of thousands of such sellers on Amazon’s “Merch” platform alone. Google searches for “Print on Demand” are rising. The potential number of ineligible applications generated by print-on-demand sellers – where each business may produce thousands of unique novelty expressions – is nearly impossible to overestimate.

USPTO is drowning in paperwork. Yet such applications are likely to increase due to the low barrier to entry into print-on-demand. And that’s not all.

Misinformation among creatives and their attorneys will likewise continue to spawn ineligible applications.

Misguided Creatives and Trademark Attorneys

Creatives as a general rule are misguided and misinformed. (I can say that ’cause “Ah iz one.”)

We’re encouraged by peers and “trademark” attorneys (like those at LegalZoom and independent lawyers) to “protect” our “brands” by registering novelty slogans and designs as trademarks.

Here’s an example of the information creatives depend on:

How to Trademark a T-shirt Slogan Step By Step Guide

This is a guest post by a “Senior Trademark Attorney.” Here’s the first section:

The proliferation of print-on-demand t-shirt services such as Merch by AmazonCafePress, and Zazzle means that anyone with an internet connection can be a fashion designer. But with this ease also comes the risk that someone will copy your design and post it on a different site. Or even that you may find yourself inadvertently infringing someone else’s design.

So what can the aspiring designer do to protect his or herself?

The two main types of intellectual property protection that cover t-shirt design are trademark and copyright. For the purposes of this article, I will focus on trademark law. Do understand though that designs may also be copyrighted provided they meet the requisite standards of sufficient original expression.

Please don’t miss the key points in this title and introduction. Readers are learning:

  • How to trademark a T-shirt slogan
  • Designers “risk that someone will copy your design and post it on a different site”
  • This article will teach designers how to “protect their designs” with trademark registration

Moment of silence for USPTO examining attorneys forced to wade through thousands of ineligible applications.

More Bad Advice

This article is not the only bad “trademark attorney” advice to be found.

One business owner I know filed several trademark applications for her T-shirt slogans on the advice of her trademark attorney. Each one was refused due to its failure to function as a source indicator. (Identities withheld to protect their reputations.)

Likewise, I can show you five significantly-harmful applications that were prepared by “trademark attorneys” (including some “big guns”). They’re some of the eleven cases in which USPTO refused registration after accepting post-publication Letters of Protest that provided evidence of widespread ornamental or descriptive use (more on these later).

Back to the “Step By Step Guide”

So what are the steps the article above suggests to help creatives get a trademark “step by step”?

  1. Clearance search – to make sure there are no similar phrases already registered. Okay. Nice of you to mention it. But you didn’t bother mentioning, a similar mark in a coordinated class might be an issue, or how to do a trademark search.
  2. Application – USPTO now requires attorney assistance. But that’s not a whole lotta help. (Don’t hate me. I love attorneys. My dad was an attorney. It’s just that they can be pretty… um… how you say? Clueless? If you’ve only got a hammer everything looks like a nail.)
  3. Proof of use (specimen). So far so good.

Now we come to the meat of the article. Learn how to overcome an Ornamental Refusal in Part 5b (and why I really wish you wouldn’t).

This is Part 5a 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