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 about loopholes created by overly-strict “At the Beach” poem introduction or scroll to the bottom for an ordered list of posts.)rules. (To see an overview of the series, go to the
USPTO’sprocedure has helped slow down some faulty registrations. But there are a few problems with the current system that bias everything toward faulty registrations.
Why so many frivolous trademarks? The hands of USPTO’s examining attorneys are tied by loopholes, fuzzy language, and overly-strict protest rules. Facts are friendly, and once these issues are identified, maybe they can be removed.
In Part 6 of this series, I tried to point out some of the fuzzy language from Lord Case Law and Tammy TMEP that leaves examiners confused and forced to issue faulty registrations. We’ll dive a little deeper into that in a minute. But first, let’s talk about loopholes.
Typical Example: Black Lives Matter Spin-Off
COLORED LIGHTS MATTER MERRY CHRISTMAS (SN 87594788) was very nearly a registered trademark.
The only reason it didn’t register is that the applicant failed to file their statement of use.
Never mind that this message is an obvious parody of the “Black Lives Matter” social campaign. (Polly Protester submitted a post-publication protest, but it was refused. More on that later.)
This is one battle Polly was glad to lose because the trademark owner is a veteran. Nevertheless, it’s rather incredible that USPTO deemed COLORED LIGHTS MATTER MERRY CHRISTMAS a source indicator.
How on earth did this happen? Easy-peasy, sweet Louisey:
- Loopholes (inadequate specimens, intent to use, partial phrases)
- Fuzzy language
Trademark Registration Loopholes
The three biggest loopholes are:
- inadequate specimen requirements
- Intent to use
- incomplete phrases
Loophole 1: Inadequate Specimen Requirements
We talked about overcoming Ornamental refusals before, in Part 5. Let’s dive a little deeper.
Need a specimen? No problem! Use any of these methods to “prove proper trademark use”:
- Lay a custom hang tag on top of a blank T-shirt, tuck the end inside the collar, and take a picture of that top corner of the garment.
- Get your brand imprinted inside the collar of a blank T-shirt. Or have your local printer produce a specimen with the mark in small print over the breast pocket area. Costs around $5-10, I’m told.
- Use a plastic doohickey-thingamajig to actually attach your hang tag to the garment’s collar tag.
- Take a picture of your fancy hang tag with some nice twine. No product is necessary.
- Put your folded shirt inside a clear bag and slap a big label on top so the contents of the bag are mostly covered. Print your “mark” on the label.
- Print your mark on the product packaging (Keep Calm and Drink Beer)
- Print your “trademark” on a business card and a banner (Keep Calm and Go Green). That totally changes consumer perception, right?
- Spare no expense. Get the fancy scissors from the arts and crafts department at WalMart and cut the edges of the tag. Nothing says “registrable” like adding that little personal touch.
- Limit your trademark application phrase to a word or two less than what’s on the shirt (KEEP CALM AND LOVE for Keep Calm and Love Bison shirts) – this tactic is incredibly successful
I apologize. I know sarcasm doesn’t look good on me.
Maybe you wonder how come I’m smart or savvy enough to come up with so many great ideas.
News flash: I’m not. And I didn’t.
But these tactics are used so often, and with such great success, it’s almost enough to make a grown woman throw a hissy fit. At least, if she loves freedom.
Let’s take a look at the specimens. (Source: Author’s private Registered Marks Airtable, “Keep Calm” view.)
Sixteen of these specimens were approved because, hey, after all, there’s a hang tag! In fact, one of them had ONLY a hang tag! Proper trademark use, y’all!
I have nothing against these owners. It’s just that… y’all!
Applications to register terms in the typical novelty-product classes should be required to include specimen photos that show the entire product, not simply a hang tag or product packaging. And a hang tag shouldn’t be allowed to magically confer distinctiveness.
Thanks again, Dr. Roberts, for the lovely language.
Loophole 2: Intent to Use
If it’s too much trouble to print the tag at your local Kinko’s, a mock-up will often suffice. Especially if you are filing an application based on “Intent to Use – Section 1(b).”
Here’s the specimen for COLORED CHRISTMAS LIGHTS MATTER MERRY CHRISTMAS:
Where’s the “shakes head” emoji on my keyboard?
Novelty expressions that are not yet used in commerce are among the most common type of bogus trademarks. That’s because USPTO’s over-reliance on “use in commerce” to determine registrability is often exploited.
Let’s state the obvious: novelty products are decorated with expressions that are NEW.
Did you notice a hilarious meme?
Quick! File an application!
Loophole: Intent to Use
Registration before use in commerce is practically guaranteed because awill probably fail.
In the case of COLORED LIGHTS MATTER MERRY CHRISTMAS, Polly Protester stumbled across the application after it had been published for opposition.
to support a refusal at the post-publication stage in the examination process requires (at a minimum!):
- many types of products
- offered on several platforms
- each product displaying an EXACT MATCH of the phrase
Well, guess what?
Even the owner of the mark hadn’t produced a single product displaying the exact phrase.
Nevermind that “Black Lives Matter” spawned many similar parodies:
- Blue Lives Matter (Police)
- Single Lives Matter (Singles Awareness Day)
- Drunk Lives Matter (St. Patrick’s Day)
- Chicken Lives Matter (Easter)
- Cinco De Mayo Matter
- Beard Lives Matter (Father’s Day)
- American Lives Matter (July 4th)
- Teachers Lives Matter
- No Lives Matter (Halloween)
- Turkey Lives Matter (Thanksgiving)
- Santa Lives Matter (Christmas)
- Elf Lives Matter (Christmas)
- Black Lights Matter
- Bee Lives Matter (Beekeepers)
- Belgian Lives Matter
- Blonde Lives Matter
- Colorblind Lives Matter
- Nerd Lives Matter
- Old Lives Matter (Grandparents)
- Squirrel Lives Matter (Squirrel Lovers)
- Tow Lives Matter (Tow Truck Operators)
- White Lives Matter
- Zombie Lives Matter
- Black Angus Lives Matter
- Black Ice Matters
- Black Cats Matter
- Black Kings Matter (African Pride)
- Black Labs Matter
- Black Rifles Matter (2nd Amendment)
- Drunk Friends Matter
- Irish Livers Matter
- Square Lights Matter
- Thick Thighs Matter
- Drunk Wives Matter
(Side note to Merch By Amazon participants: Parody is a pretty dumb thing to do on Amazon. Putting any of the above slogans on your products could place your account at risk. Don’t be foolish.)
I’ll point out some language in TMEP that should have made refusing the COLORED LIGHTS MATTER MERRY CHRISTMAS a no-brainer. But it’s rather obscure, so unless the examiner was sleeping with TMEP under his/her pillow, it’s no wonder they missed the two statements that prove ineligibility of this “mark.”
Loophole 3: Incomplete Phrases
Here’s another type of questionable mark. The only difference being, these open-ended statements are registered trademarks that someone is using to “protect” an idea and avoid competition:
- 86630783 ALWAYS BE YOURSELF UNLESS YOU CAN BE A (unicorn, mermaid, etc.)
- 86557122 ASK ME ABOUT MY (grandkids, awesome daughter, baby pug, etc.)
- 87269271 CHEAPER THAN THERAPY (wine is, running is, tacos are, etc.)
- 86557154 CRAWL, WALK,… (Fish/golf/hockey/surf; baby shirts)
- 86557157 GRANDPA SINCE (2010, 2011, etc.)
- 87070847 GREETINGS FROM (Alaska, etc.; souvenir shirts)
- 86419264 I LOVE IT WHEN MY WIFE (lets me fish, golf, etc.)
- 86180548 I LOVE IT WHEN MY WIFE (lets me fish, golf, etc.)
- 87554264 I’M DIGGING (being 4, 5, 6, 7)
- 87396302 LEGENDS ARE BORN (in October, in 1957, etc.)
- 86557171 MY HEART BELONGS TO (my husband, my horse, Texas, etc.)
- 86557180 REAL WOMEN (love cats, eat chocolate, lift weights, etc.)
- 86557184 THIS DUDE (loves pizza, just turned 18, drives fast cars, etc.)
- 85674407 THIS GUY (loves pizza, just turned 18, drives fast cars, etc.)
- 86341905 THIS MAN (loves pizza, just turned 18, drives fast cars, etc.)
- 86557191 THIS IS WHAT THE WORLD’S GREATEST… …LOOKS LIKE (mom, dad, grandma, etc.)
- 86231076 WHEN I’M BIG (I’m going to be a doctor, lawyer, etc.)
- 86339336 WORLD’S OKAYEST (mom, dad, etc.)
- 86330807 YOU CAN’T SCARE ME (I’m a scientist/dad/mom/teacher, etc.; this is from Raiders of the Lost Ark)
I know, I know.
An IP infringement claim against anyone using these phrases in a T-shirt design wouldn’t hold up in court. It doesn’t have to. The registration is sufficient to eliminate most competition.
The worst part is, TMEP and case law are of little help.
These expressions “qualify”… mostly. Even if industry insiders recognize them as key elements of popular novelty expressions. Check out Tammy TMEP’s Merely Informational Bullets in Part 6.
Here are some more examples of registered marks that used the Hangtag (“proper trademark use”) Strategy. Notice how many of them combine the Hangtag Strategy with the Partial Phrase strategy.
Not sayin’ they’re not real brands. Just sayin, if the average consumer read this message displayed large on a shirt (especially if the statement was completed logically), would they think it was a brand? You be the judge.
(Source: Author’s private Registered Marks Airtable, Hangtag view.)
In case the Airtable doesn’t display, here’s a list of the marks (27 of the 40 applications were prepared by attorneys):
|Trademark||Serial No.||Reg. No.|
|ASK ME ABOUT MY…||86557122||4831612|
|BE NICE TO ME MY WIFE IS PREGNANT||86331641||4746598|
|BORN TO FISH FORCED TO WORK||86336299||4746613|
|I CAN’T ADULT TODAY||86829703||5233352|
|I CAN’T KEEP CALM I’M GETTING MARRIED||86048573||4704673|
|I CAN’T KEEP CALM I’M GOING TO BE||87314687||5262807|
|I CAN’T KEEP CALM I’M HAVING A BABY||86193612||4531155|
|I CAN’T KEEP CALM I’M THREE||86893705||5040448|
|I CAN’T KEEP CALM I’M TWO||86553820||4831335|
|I CAN’T KEEP CALM IT’S MY BIRTHDAY||86381353||4746828|
|I CAN’T KEEP CALM SANTA’S COMING||86366622||4708287|
|I LOVE IT WHEN MY WIFE||86419264||4747528|
|I LOVE IT WHEN MY WIFE||86180548||4747528|
|I’D RATHER BE SLEEPING||87143941||5259280|
|I’D RATHER BE WITH MY DOG||86096269||4680605|
|JESUS COFFEE YOGA||87392080||5483772|
|KEEP CALM AND ACK NICE||85346472||4207307|
|KEEP CALM AND CHIVE ON||86074953||4559100|
|KEEP CALM AND DRINK BEER||86068193||4615044|
|KEEP CALM AND GO GREEN||86147887||4616480|
|KEEP CALM AND HEAD UP NORTH||85733161||4334580|
|KEEP CALM AND LET MIMI HANDLE IT||86626134||4870662|
|KEEP CALM AND LET NANA HANDLE I||86616473||4934349|
|KEEP CALM AND LET PAPA HANDLE IT||86608447||4870224|
|KEEP CALM AND LOVE||86580794||4921654|
|KEEP CALM AND WORK OUT||86548075||4827027|
|KEEP CALM I’M ALMOST||87582645||Refused|
|LIFE IS BETTER IN THE STATE OF HI||87368670||5520501|
|LIVE FREE VOTE RIGHT||87592036||5531740|
|MY HEART BELONGS TO…||86557171||4831619|
|NAUGHTY NICE I TRIED||87260349||5274895|
|THIS IS WHAT THE WORLD’S GREATEST… …LOOKS LIKE||86557191||4888164|
Hey, if someone reading this happens to own one or more of the marks displayed above, relax. Nobody’s trying to pick on you, and USPTO won’t be coming after these trademarks. Even if they agree with me that these were registered in error.
What’s done is done, and the only fair method of canceling past mistakes is via random audits or some competitor paying an attorney to fight it.
I’m not your enemy, and none of these marks affect me. And really, I’d rather be doing pretty much anything besides this post. But frivolous trademarks harm all of us.
If a pre-publication protest fails or is not even filed, a post-publication protest has no chance of succeeding against “trademarks” like these. Many of these phrases don’t even make sense until you see their completion on a T-shirt.
And there are zero competing products bearing the exact expression. Let’s say it again: the registration is sufficient to eliminate most competition.
Keep in mind, an Intent to Use application doesn’t require a specimen until after it is published for opposition. And if the specimen fits the Hangtag Strategy, it’s game over.
According to Tammy TMEP, first in line gets to register a novelty expression. At least, if they can do so before the market is saturated. It’s been that way since LIFE GUARD was registered in 1938.
Challenge: Fuzzy Language, Take 2
Tammy might throw around “merely informational” language a bit. But as we already noticed in Part 6, her bullets indicate it’s not “informational” if it doesn’t say anything about the materials used to create the product. And it’s not “widely used” if you get the trademark before scores of alternative designs for the same phrase are created by your competitors.
Never mind consumer perception and common sense.
Some attorneys get it. (Kudos to USPTO attorney who had the wherewithal to refuse an application in spite of the “not yet widely used in commerce” loophole.)
But many decisions appear to be made with disregard for consumer perception. And inadequacies in theform make it hard for industry insiders to share what they know.
The following key point is largely ignored when USPTO examines applications in the typical print-on-demand classes:
…the informational significance of I ♥ DC was “reinforced by the fact that similar expressions in the form of ‘I ♥__’ have also been widely used to express such enthusiasms with respect to other places and things.TMEP 1202.04(b) Widely Used Messages
Yes, Tammy TMEP says a T-shirt slogan has “informational significance.” And she says right there, “similar expressions” that “express enthusiasm” are not registrable.
Yet it happens. All. The. Time.
Why is this?
Argument Definition: theLoophole
Theform does not allow any input that might be construed as a legal argument. This means protesters cannot highlight specific text in the TMEP.
So, for example, a salient quote from TMEP might help thequickly see the validity of the protest . But when the is forwarded to the , often only the “parent” legal basis is given for consideration.
I’ve seen it time and time again. A protest legal basis of “TMEP 1202.04(b) Widely Used Messages” becomes “TMEP 1202.04 Informational Matter.” Tammy TMEP’s quote about I ♥ DC, if included in the Legal Basis section of the protest form, will not be included in the cover memo when theis sent to the examiner.
Even if it is, the greatest emphasis seems to be on this phrase from TMEP 1202.04(b) Widely Used Messages:
I ♥ DC failed to function as a mark for clothing items [because] the wording “has been widely used, over a long period of time and by a large number of merchandisers”
Two of the case law examples included in Part 6 are hidden deep within TMEP:
- MOUNTAIN CAMPER (for outdoor equipment and apparel, TMEP 1209.03(i) Merely Descriptive of Intended Users)
- OUTDOOR PRODUCTS (for a class of goods worn and used by persons engaged in outdoor activities, 1209.01(c)(iii)Generic Matter: Case References)
The language about intended users is quite instructive. Let’s take a look:
A term that identifies a group to whom the applicant directs its goods or services is merely descriptive. See… In re Camel Mfg. Co., Inc.,222 USPQ 1031 (TTAB 1984) (MOUNTAIN CAMPER held merely descriptive of retail mail-order services in the field of outdoor equipment and apparel).TMEP 1209.03(i) Intended Users
Why? Because “TMEP 1209.03(i)” listed as the legal basis on awill most likely become “TMEP 1209.03 Descriptive” for the examiner. “TMEP 1209.01(c)(iii) Generic Case Matter References” will become “TMEP 1209.01 Generic.”
What are the chances of finding the 17 out of 2014 words that reference apparel? The only other case that includes products related to print-on-demand is RUSSIANART (generic for dealership services in the field of fine art, antiques, furniture, and jewelry).
Although it includes an apparel example, the MOUNTAIN CAMPER language is unlikely to help a. The same thing goes for the OUTDOOR PRODUCTS generic case law example.
Why? Including specific case law amounts to presenting a legal argument! This is inappropriate for ex parte examination! Can’t you guys read?
And the’s approval will not be overturned without a clear error, y’all. If the hangtag is there and the market isn’t flooded with the same exact expression, the approval will stand.
This is Part 8 of a 10-Part Series. If you missed previous installments select from the list below to read the rest of the series. (Part 4 is next).