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On Fighting Frivolous Trademarks, Part 8a: Letter of Protest Loopholes

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 Letter of Protest rules. (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.)

USPTO’s Letter of Protest procedure 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.

“No way!”

Yes, way.

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:

  1. Loopholes (inadequate specimens, intent to use, partial phrases)
  2. Fuzzy language
  3. Letter of Protest limitations

We’ve talked about overcoming ornamental refusals in Part 5, and fuzzy language in the TMEP in Part 6. Let’s take a closer look at each of these issues.

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.

In Part 5 I shared a list of trademarks spawned by the “Keep Calm and Carry On” posters of World War II.

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!

Gad.

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:

Colored Christmas Lights Matter Drawing

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 a Letter of Protest will probably fail.

In the case of COLORED LIGHTS MATTER MERRY CHRISTMAS, Polly Protester stumbled across the application after it had been published for opposition.

Evidence 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):

TrademarkSerial No.Reg. No.
ASK ME ABOUT MY…865571224831612
BE NICE TO ME MY WIFE IS PREGNANT863316414746598
BORN TO FISH FORCED TO WORK863362994746613
BRIDESMATES86466418
CRAWL, WALK,…865571544801456
GRANDPA SINCE…865571574888163
I CAN’T ADULT TODAY868297035233352
I CAN’T KEEP CALM I’M GETTING MARRIED860485734704673
I CAN’T KEEP CALM I’M GOING TO BE873146875262807
I CAN’T KEEP CALM I’M HAVING A BABY861936124531155
I CAN’T KEEP CALM I’M THREE868937055040448
I CAN’T KEEP CALM I’M TWO865538204831335
I CAN’T KEEP CALM IT’S MY BIRTHDAY863813534746828
I CAN’T KEEP CALM SANTA’S COMING863666224708287
I LOVE IT WHEN MY WIFE864192644747528
I LOVE IT WHEN MY WIFE861805484747528
I’D RATHER BE SLEEPING871439415259280
I’D RATHER BE WITH MY DOG860962694680605
JESUS COFFEE YOGA873920805483772
KEEP CALM AND ACK NICE853464724207307
KEEP CALM AND CHIVE ON860749534559100
KEEP CALM AND DRINK BEER860681934615044
KEEP CALM AND GO GREEN861478874616480
KEEP CALM AND HEAD UP NORTH857331614334580
KEEP CALM AND LET MIMI HANDLE IT866261344870662
KEEP CALM AND LET NANA HANDLE I866164734934349
KEEP CALM AND LET PAPA HANDLE IT866084474870224
KEEP CALM AND LOVE865807944921654
KEEP CALM AND WORK OUT865480754827027
KEEP CALM I’M ALMOST87582645Refused
LIFE IS BETTER IN THE STATE OF HI873686705520501
LIFEGUARD775671263796591
LIVE FREE VOTE RIGHT875920365531740
MY HEART BELONGS TO…865571714831619
NAUGHTY NICE I TRIED872603495274895
REAL WOMEN865571804844657
THE DOGFATHER865571825337799
THIS DUDE865571844831620
THIS IS WHAT THE WORLD’S GREATEST… …LOOKS LIKE865571914888164
WIFEY865050495034202
List of Partial Phrases Questionable Trademark Registrations (Class 025 – Clothing)

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 the Letter of Protest form 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: the Letter of Protest Loophole

The Letter of Protest form 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 the Attorney Advisor quickly see the validity of the protest evidence. But when the evidence is forwarded to the examining attorney, 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 the evidence is 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:

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 a Letter of Protest will 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 Letter of Protest. 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 examining attorney’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).

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