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On Fighting Frivolous Trademarks, Part 6: USPTO Issues and Efforts

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. This post discusses trademark system bias toward faulty registrations and steps USPTO has taken to reduce it. 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.)

Here’s something that really bugs me, y’all. It’s when people outside USPTO blame all the faulty registrations on the examining attorneys.

Other attorneys say things like,

“[Trademark] examiners need to be better trained so that improperly-used marks do not register…”

Attorney letter in support of Letter of Protest fees

Meanwhile, creatives say stuff like,

“What’s the matter with the [expletives deleted] examining attorneys? Are they being bribed? Don’t they think?”

Composite of comments posted in various Facebook groups

Sigh.

Y’all don’t understand the challenges examining attorneys face. Every. Single. Week. Challenges they face while doing a mind-numbing job I would not want on my nerdiest day.

Is USPTO responsible for issuing valid marks? Yes.

Can they write the laws that determine which marks qualify? No.

Responsibility does not equal fault.

The trademark system is biased in favor of faulty registrations. Yet this bias is not the fault of the USPTO. And it’s beyond the control of the attorneys.

Let’s talk about some big challenges examiners face. Later I’ll highlight USPTO’s efforts to minimize the damage fairly and efficiently.

USPTO Challenge: Duty to Adhere

Examiners are duty-bound to strictly follow The Lanham Act, case law applications of it, and Tammy TMEP’s sometimes incomplete or confusing summaries of what the case law says.

All of this legal mumbo-jumbo, stirred together in the pot, has created the bias toward faulty registrations. Examiners are simply fulfilling their duty to promote speedy registrations.

Y’all, USPTO’s biggest goal is to help businesses register their respective trademarks as quickly as possible so they can create value in the marketplace while protecting themselves and their customers from counterfeits and thieves.

It’s a grand endeavor, and the attorneys I’ve spoken with at USPTO are smart, capable, and passionate about what they do.

Presumption of Innocence

Examining attorneys cannot refuse a mark based on a “hunch” of how it might be abused. As my helpful Attorney-Advisor contact, Joe, explained, their hands are tied by silence in the case law, and by standards in USPTO’s Trademark Manual for Examining Procedures (“TMEP” — I’ve been calling her “Tammy TMEP” for fun).

The examiners must presume the best motives of the applicant and try to say yes. This is why they’re so quick to help applicants overcome an ornamental refusal, y’all!

And if it was your application on the line, you’d be very grateful they’re trying so hard to help you jump through the right hoops to get your registration.

Even if examiners are aware that loopholes are being used by others to game the system, they don’t have the right to presume that’s what a particular applicant is doing. And considering how “exact” most legal beagles try to be with the written word, it’s surprising how much wiggle room exists for slipping frivolous trademarks onto the register.

Duty When in Doubt to Err on the Side of Applicants

Here’s my take on what Joe’s had to remind me of many, many times: “If it’s a maybe, say yes. Disputable issues must be dealt with between the parties before the Trademark Trial and Appeal Board or in federal court.”

Which means examiners must approve questionable applications.

It’s as if the examiners have been assigned as court-appointed attorneys for OJ. They’ve got to do their best to find reasons to acquit.

So can we please stop with all the examiner-shaming, PTO-blaming talk?

Please?

(I’ve probably come across that way in some of this series, and I reckon I need to go back and sanitize more of my opinion out. Because sometimes my sense of humor is, um, how you say? Not much funny.)

6b USPTO Challenge: Limited Case Law Examples

Tammy TMEP is the bossy big sister who tells Examining Attorneys what they have to do about each application.

The frivolous marks being granted in great numbers are indicative of Tammy TMEP’s bias toward faulty registrations and the silence in case law

Informational References

Spend an afternoon with Tammy and you’ll discover she’s got very little to say about case law related to print-on-demand. Here are her examples of Informational Matter terms that reference typical novelty goods:

  • I ♥ DC for bags, clothing, plush toys
  • ONCE A MARINE, ALWAYS A MARINE for clothing
  • I LOVE YOU for bracelets
  • NO MORE RINOS! for bumper stickers, signs, and t-shirts
  • CLOTHING FACTS for clothing

Ornamental References

Tammy mentions a few other examples of novelty expressions, but mostly in her section on Merely Ornamental refusals:

  • BLACKER THE COLLEGE SWEETER THE KNOWLEDGE (for shirts?)
  • SUMO (with stylized representations of sumo wrestlers) on T-shirts and baseball-style caps
  • YOU ARE SPECIAL TODAY for ceramic plates
  • DAMN I’M GOOD on bracelets and on hangtags affixed to the goods

Descriptive References

There are two other obscure references that apply to print-on-demand, but they’re not in either of the above sections:

In Part 8 I’ll explain why these last two examples are unlikely to prevent faulty registrations despite their inclusion in TMEP.

If the specimen includes a hangtag or neck imprint, how many attorneys will take a deep dive into the Merely Informational and Generic sections of their manual looking for reasons to refuse? I probably wouldn’t. Would you?

But suppose the examiner is a trademark law ninja. You might think these eleven case law examples are enough to stop faulty registrations.

You’d be wrong.

Because sometimes Tammy TMEP is kinda vague.

6c USPTO Challenge: TMEP’s Vague “Merely Informational” Language

The Trademark Manual for Examining Procedures (TMEP) leaves plenty of wiggle room for faulty registrations.

Vague Informational Matter Overview

Take TMEP 1202.04 – Informational Matter, for example. Tammy TMEP is just vague enough in her first few paragraphs that a whole lotta goofy expressions end up being registered that are incapable of functioning as trademarks. Check out this quote:

Matter is merely informational and does not function as a mark when, based on its nature and the context of its use by the applicant and/or others in the marketplace, consumers would perceive it as merely conveying general information about the goods or services or an informational message, and not as a means to identify and distinguish the applicant’s goods/services from those of others.

Because the function of a trademark is to identify a single commercial source for particular goods or services, if consumers are accustomed to seeing a term or phrase used in connection with goods or services from many different sources, it is likely that consumers would not view the matter as a source indicator for the goods or services. [Emphasis added.]

TMEP 1202.04 Merely Informational Matter

If I were Queen of Quality Trademarks, I would force Tammy to change those two paragraphs. Why?

She said nothing about “informational” to broaden its definition beyond information about goods or services. Nothing about variations of widely-used informational and social messages. (She’ll mention them much later.) 

She mentions terms and phrases used in connection with goods or services from many sources, but says nothing about brand new novelty slogans

And social messages and novelty slogans are the sources of most of the faulty registrations in the print on demand industry.

Nebulous Definitions of “Informational”

Let’s take on an example.

Most creatives think “informational message” applies to “BOYMOM” so it obviously fails to function, right? As in, every mom on the planet would recognize this as INFORMING others of the wearer’s accomplishments.

After all, it’s shorter and faster than saying, “I’m surviving endless days of blessed noise, mud, and bloody bike wrecks, and I’m mostly happy about that. Feel free to offer me chocolate.”

Merely Informational Bullets

But what YOU think is an “informational message” is not what TMEP (at first glance) says is an “informational message.”

Don’t believe me? Tammy TMEP explains “merely informational” as:

  • The matter merely conveys general information about the goods or servicesSee TMEP §1202.04(a).
  • The matter is a common phrase or message that would ordinarily be used in advertising or in the relevant industry, or that consumers are accustomed to seeing used in everyday speech by a variety of sources. See TMEP §1202.04(b).
  • The matter is a direct quotation, passage, or citation from a religious text used to communicate affiliation with, support for, or endorsement of, the ideals conveyed by the religious text. See TMEP §1202.04(c).

Notice the word “information” is only in the first bullet point.

“Information about the goods or services” would be something like “stainless steel” for garlic presses, or “100% cotton” for shirts. That won’t stop an application for BOYMOM.

Lawyers could probably write reams in support of the registrability of this term based on TMEP and case law. Yet the average consumer translates it as “I am the mother of a boy. I’m thrilled and exhausted. Pray for me, y’all.”

It’s an informational statement of fact, not a source indicator. Not to mention, it’s also merely descriptive of the intended users. And with all due respect to whomever the owner of that mark is, I’m just sayin, they done slipped through some loopholes.

6d USPTO Challenge: TMEP’s Vague “Widely-Used Message” Language

Now here’s where Tammy TMEP is REALLY silly. She’s got an idea of how variations of widely-used messages affect the grocery industry, but she leaves a lot of wiggle room for print on demand.

Derivatives or variations of widely used messages also fail to function as marks if they convey the same or similar type of information or sentiment as the original wording… See In re Melville Corp., 228 USPQ 970, 971 (TTAB 1986) (finding BRAND NAMES FOR LESS failed to function as a mark based evidence of widespread use of similar marketing phrases, noting that “[t]he fact that applicant may convey similar information in a slightly different way than others is not determinative.”)

TMEP 1202.04(b) Widely Used Messages

That little quote is why grocery stores can’t register a key phrase found in “similar marketing phrases.” But brand new novelty slogans (the ones consumers are not yet “accustomed to seeing… used in connection with goods or services from many different sources” are not covered by this language.

Because novelty expressions are not considered “marketing phrases” Y’all.

So Tammy’s language about “similar phrases” is often disregarded, at least when it comes to Letters of Protest.

Most definitely it’s disregarded with respect to post-publication Letters of Protest. Unless the evidence shows an EXACT MATCH for the expression, the protest will not be accepted. (This was the experience of Polly Protester and Joe confirms it.)

Ignoring the Context of “Common Phrases”

Skip back up to the top, to that second bullet point: “common phrase or message… used in everyday speech.” This is the Grand-Canyon-sized loophole that allows new novelty expressions to get trademark registration. All Day Every Day. Just add a word, Mama, and you’re good to go.

When applications include common phrases as part of a longer expression, most of the time the application will be granted. Because, after all, MAMA ALL DAY EVERYDAY is distinctive, right? Nobody else has registered it yet.

Ain’t nobody sees BOYMOM on a shirt and thinks it’s a brand. Same thing for MAMA ALL DAY EVERYDAY Y’all.

I’m not pickin’ on anyone. Just digressin’.

Collateral Damage vs. Faulty Registrations

The sad fact is, there’s nothing legitimately available in the IP world to protect these “assets” from copycats. I get it. But this is not an appropriate use of trademark.

Copycats and stolen profits are the collateral damage of issuing only valid registrations. I wish it wasn’t so. But faulty registrations hurt more people in more ways.

Trademarks, used to “protect” a novelty slogan or expression, “chill competition.” (Thanks, Dr. Roberts, for such a lovely expression.)

We’ll talk more about this in Part 8. (Me and the mouse in my pocket.)

Tammy TMEP also has a strict definition of “descriptive” that makes it hard to stop frivolous trademarks. We’ll talk about that later, too.

Bottom line: Lord Case Law and Tammy TMEP both have a lot of fuzzy language when it comes to applying what Lord Lanham Act says to the print-on-demand industry. They just do. And unless it’s a “NO WAY!” then examiners must say yes.

6e USPTO Challenge: Industry-specific Trademark Law

Applications are on the rise, as are faulty registrations. But fixing the problem is not as simple as saying, “common terms cannot be registered.”

If that were true, then Apple (computers), Banana (tires), Jaguar (cars), Orange (amplifiers), Wave (accounting services), Box (online storage services) and many other legitimate trademarks would not exist.

And, whether creatives like it or not, keywords such as Dog, De Nada (Spanish shirts), and Mashed Potatoes (Thanksgiving shirts) “fit” case law requirements for trademark registration, even for T-shirts.

Is it possible – or even likely – some marks of ordinary words will be misused to eliminate competition in certain niches (at least, on Amazon)? Yep.

Innocent until proven guilty before TTAB or in federal court, Y’all.

Sorry if that policy harms you, but the alternative is worse.

Finding Industry-Specific Evidence

What many don’t realize is that trademark law is industry-specific.

Meaning, a term can be a trademark “stamp” (symbol of ownership) in one class of goods or services, and a “sword” in another. And the examining attorney must provide industry-relevant facts to support a refusal.

It’s not a matter of suspicion. It’s a big fat hairy deal.

Pressure to acquit, remember? And industry-specific evidence to support a refusal can be hard to find.

So here’s a quick example:

There are legit registrations of “All Day Every Day” (or tiny variations thereof) for pants and shorts, legal services, and more. No problem. The problem arises when you put it on a shirt, especially with an additional word in front (mama; baseball; football; knitting).

But how would the examining attorney find evidence that “Mama All Day Every Day,” “Baseball All Day Every Day,” and so on are merely variations of a well-known phrase, and that oodles of similar variations exist?

This is one case where the Amazon search bar is of little use because customers aren’t searching for “All Day Every Day” shirts. They’re searching for “mom shirt,” “baseball shirt,” “football shirt,” “knitting shirt.”

Evidence Collection and Presentation is Time-Consuming

Finding relevant industry-specific evidence to support refusal of a frivolous trademark application can be a time-intensive process.

Examiners review applications for every industry you can imagine, from every country. They’re expected to deal with each one once, and make an initial decision within a week or so of the assignment. If they issue a refusal, they must explain why and provide objective evidence to support their decision.

So imagine you’re the examiner, and you have a gazillion frivolous applications to review. Each refusal has to include evidence supporting your decision. If the applicant responds, your final refusal must contain all the evidence needed to prove your case before the Trademark Trial and Appeal Board.

Y’all. I spent an entire week gathering evidence for my first post-pub Letter of Protest. I knew what evidence was needed and how to find it. But stuff takes time:

  • collecting evidence
  • annotating it for evidence rules compliance
  • eliminating duplicate content
  • creating an index to describe each page and relevant details

All these things take time.

(By the way, the index doesn’t go to the examiner. But they go through a similar process to write a refusal, citing specific pages of evidence and the relevant fact(s) it proves.)

I have one word for all the examiners: Respect.

6f USPTO Efforts to Fight Faulty Registrations

Can I just say it? I love the USPTO.

When I think of Director Iancu, and former Commissioner Mary Denison, and new Commissioner David Gooder, and the Attorney Advisors I’ve spoken with, and even the examiners I’ve never known, I get teary-eyed.

I really do.

They are fighting so hard to fix this mess!

USPTO Directives to Reduce Faulty Registrations

Here are some of the things they’ve done:

  • Supplemental Training – USPTO created a supplemental training (in July, 2017?) for Merely Informational Matter which they tried to incorporate into the latest version of TMEP (it’s no longer online, but I have a copy and will upload/link it later, Lord willing and the tide don’t rise)
  • Specimen Mock-up Protest – in 2018(?), USPTO enabled third-party reporting of mock-up specimens
  • Attorney Requirement – USPTO now requires new applications to be filed by attorneys
  • Random Audits – USPTO does random audits of registered trademarks. I stumbled across one of these from January, 2018, and shared screenshots in my USPTO Audits post. The audit requires “proof of use of the registered mark for two additional goods per class.
  • Letter of Protest and Staff Availability – they provide the Letter of Protest procedure so anyone, anywhere, can provide objective evidence relevant to the registrability of a mark, and their cheerful, patient, friendly staff will answer a protester’s questions with the greatest of professionalism, impartiality, and kindness

Aren’t these folks the greatest? They sure are!

Results of USPTO’s Efforts

No doubt the supplemental training has been a huge factor in slowing down faulty registrations. Many if not most of the examples of faulty registrations I share in this series were registered prior to 2018.

Likewise, friends in the print-on-demand community have reported that Specimen Mock-up Protests stopped some frivolous/faulty registrations. It’s not a guarantee.

The attorney requirement should reduce the number of frivolous applications (by virtue of the added cost, if nothing else). It didn’t stop the application of I SURVIVED COVID-19 AND ALL I HAVE LEFT IS THIS LOUSY !#%&*! (SN 88894347) for T-shirts, but at least they’re trying!

The thought of random audits that require proof of use for two additional goods per class brings me nearly as much satisfaction as Schogetten chocolates. That’s not spam, I’m serious. (The chocolate is cheaper direct from Aldi’s. And if you don’t live near an Aldi’s, I’m so sorry. I just am.)

The Letter of Protest has also proven to be the most valuable, impartial weapon yet in the fight against frivolous trademarks. In Part 7, I’ll share some of the positive results of the Letter of Protest procedure despite challenges protesters face.

This is Part 6 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