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On Fighting Frivolous Trademarks, Part 9a: Letter of Protest Problems

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. This post uses the AFFIRMATIONS Letter of Protest to expose inconsistent language in the trademark manual that creates needless hurdles to protests and increases the bias toward faulty registrations. (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 a trademark Letter of Protest example that illustrates some of the challenges examining attorneys face in issueing valid trademarks.

Yes, as I said in Part 8, many decisions appear to be made with disregard for consumer perception. And overly-strict Letter of Protest rules make it hard for industry insiders to share what they know.

But it’s not just that protesters can’t include any “arguments.” It’s that the form itself and the TMEP rules make it so difficult to get a protest accepted in the first place.

Keyword Case Study: AFFIRMATIONS

AFFIRMATIONS (SN 87859333) is an example of a marketing keyword in the print-on-demand industry. The examining attorney issued a two-fold refusal: Generic and Informational. But not until two pre-publication protests and one post-publication protest were filed and accepted.

[Note: TWD filed a pre-pub protest. The examining attorney reviewed it and took no further action. So a TWD member prepared a post-publication protest to be filed later. Meanwhile, an unknown protester also filed a pre-publication protest (this only came to light long six weeks after publication). It’s extremely unusual to see three protests filed against the same application.]

Whoa!

Does it bother you that a generic term was nearly registered?

It should!

Imagine thousands of small businesses being suddenly required to remove this extremely valuable descriptive term from their marketing.

  • Google ads
  • Facebook ads
  • Product titles
  • Product descriptions
  • Backend keywords

Ouch.

Happily, USPTO accepted a post-publication Letter of Protest. And Sara had to send a memo that made an examining attorney feel bad (I wish it weren’t so!). Here’s the first page of the memo:

USPTO Memo advising the examining attorney a post-publication Letter of Protest was accepted for “AFFIRMATIONS”

After reviewing the evidence (and the Commissioner’s assessment that approval of this mark was a clear error), the examining attorney issued a “Generic” and “Informational” refusal. Here’s the first part of it:

Affirmations Refusal

One might wonder how a mark that was refused for being generic came so close to being registered.

Y’all, it’s easy. And it’s not as cut-and-dried as it might seem in hindsight.

  • Even though competitors following best practices for protecting their Amazon or Etsy accounts WILL be harmed by a keyword-rich registration
  • even though they MAY be harassed by the owner

As long as all the i’s are dotted and t’s are crossed, a keyword-rich trademark registration is likely to issue. And this isn’t the fault of the examining attorney.

Remember, if the glove doesn’t fit, they’ve got to acquit.

And sometimes the glove doesn’t exactly fit TMEP’s “refusal rules.” Sometimes the Letter of Protest form isn’t a lot of help, either.

Case Law and TMEP Challenges

If I could talk to the examining attorney who had to admit clear error in approving AFFIRMATIONS, I’d shake their hand. I’d tell them I appreciate their work, and their willingness to learn. Because I understand how the fuzzy language in TMEP and silence in case law can lead to such a mistake.

Remember those nine novelty examples in the TMEP I listed at the beginning of this article? They’re almost all slogans or expressions of enthusiasm. Here they are again:

  • 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 (designed to look like a nutritional facts label)
  • 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

None of these bear any resemblance to AFFIRMATIONS. If I didn’t know something about Amazon and Etsy, I might have missed the marketing significance of the term. And yes, I’m really, really tired of all the rude comments I see that blame “inadequate training of examining attorneys” for all the frivolous registrations.

As if USPTO is to blame. As if the attorneys are a bunch of numbskulls.

Lemme say it loud and clear:

TMEP and case law are extremely fickle, sticky, and fuzzy when it comes to print-on-demand.

One minute Tammy TMEP says “informational messages” are expressions of enthusiasm, another minute she says they are pointing out information about the product materials. What about terms that do neither?

Letter of Protest Form Challenges

It’s a good thing AFFIRMATIONS wasn’t our first protest. No doubt it would have failed.

Most of the early protest failures can be traced to an issue with the Letter of Protest form itself.

Take a look at “Legal Basis” section of the Letter of Protest form:

Letter of Protest Legal Basis

The Letter of Protest Forms Used to Include a Moot Legal Basis

This is the new form. The old form included a box to check for a “Merely Ornamental” refusal.

Our first protests asserted the “Merely Ornamental” legal basis.

Great, except “Merely Ornamental” is an inappropriate basis for protest. USPTO expects attorneys to consider that option on their own.

We didn’t know it, but the actual Legal Basis our evidence was proving for those other protests was that each novelty phrase was merely a “Widely-Used Expression.”

But when we submitted “Widely-Used Expression” evidence with a “Merely Ornamental” legal basis, the protests were denied. Nice.

Letter of Protest Forms Omit an Important Legal Basis

The most common reason to protest a mark in the print-on-demand industry is “SECTIONS 1, 2, AND 45 REFUSAL – FAILURE TO FUNCTION AS A MARK”.

This still isn’t an option on the Letter of Protest form. (The language comes directly from Tammy TMEP’s section entitled “1202.04 Informational Matter.”)

Notice that “Informational Matter” and “Widely-Used Expression” are also missing from the Letter of Protest form.

Am I the only one who thinks this is a little bit nuts?

USPTO is inundated with ineligible applications by

  • trademark trolls with savvy attorneys, plus
  • clueless creatives and their not-always-industry-savvy attorneys

No doubt the number of applications is growing rapidly.

And the form USPTO offers industry insiders to protest these unregistrable applications doesn’t include the most likely reason for refusal?

“Merely Ornamental” is gone from the form now. Yay! But, would it have been so hard to add “Merely Informational or Widely Used Message”?

Affirmations: Legal Basis Gymnastics

When it came to choosing a legal basis for the AFFIRMATIONS protest, it became quite clear how the examiner might feel they had to approve it. Let’s talk it through.

Affirmations: Not Exactly Merely Informational

By the time the AFFIRMATIONS protest was being prepared, the creatives I worked with (Trademark Watch Dawgs) had learned to use “Failure to Function – Informational Matter” as the legal basis for protests in print-on-demand. But we wondered about using it on AFFIRMATIONS.

Many phone calls with Joe had clarified the evidence requirements and the likely interpretation of Tammy TMEP’s “Merely Informational” section.

Previous protests had proven, if the exact expression did not adorn the products, the post-publication protest would be refused. (Rules for protests are a bit stricter than for evidence the examiner provides with a refusal.)

Yet AFFIRMATIONS is a term that NEVER adorns products. It’s only used in a marketing context, to describe the type of messages available on products.

So that’s a “Descriptive” Legal Basis, right?

Affirmations: Not Exactly Descriptive

Not so fast.

According to multiple conversations with USPTO attorneys, “descriptive” terms are generally accepted to mean those that might be used to describe the materials that products are made of. Words like “soft,” “shiny,” “warm,” and so on.

In other words, NEITHER Legal Basis clearly “fit” the evidence, based on the Legal Basis definitions we’d been given and how we were allowed to rely on them for protests. (Again, examiners have a little more discretion than protesters.)

Tammy TMEP just wasn’t being much help.

In the end, we opted to list them both and pray someone with common sense would review the protest. They did, and the protest was accepted. The application was refused on both counts.

Hooray for creative freedom! Hundreds (or thousands?) of creatives are allowed to continue marketing their goods with this very valuable keyword.

But let’s offer a moment of sympathy for the examiner who got understandably tangled up in Tammy TMEP’s linguistic gymnastics. And another moment of sympathy for the applicant who chose a brilliantly-descriptive term for her products.

Y’all, picking a name is the worst. There are just so many things to consider. Number of characters. Mood. Sound. Spelling. Message. Adding distinctiveness to all that can be a real pain in the neck.

Oops. Digressin again.

By the way, I know the person who gathered the evidence for this protest. (No, it wasn’t me.)

It took many, many hours (maybe a couple of weeks or more?).

Finding proper evidence was a difficult project because it required knowledge of the industry PLUS knowledge of evidence requirements PLUS an understanding of which Legal Basis would be used.

(Psst! I wonder how many hours USPTO’s attorneys are allowed for evidence-gathering?)

Without the knowledge gained from many previous protests, this one would have likely failed.

Hopefully, this little story will illuminate some of the challenges USPTO’s examining attorneys face. The pressure is on them to say yes when they can, as quickly as they can. And some terms don’t fit neatly into TMEP’s box. It goes back to limited case law, and some pretty fuzzy language.

Silly Rules: Mama Bear and More

There’s another oft-unnecessary rule at USPTO: no cross-referencing.

Examining attorneys are expected to judge each application on its own merit.

Agreed. Wonderful.

Out of an over-abundance of caution to guarantee impartiality, attorneys are not to consider prior refusals for the same mark.

Likewise, protesters cannot say, “This term already failed to function for T-shirts. Don’t you think it fails to function for tote bags, too?”

I get it, honest, I do. We all want the examiners to do their due diligence, and not be swayed by an argument given in the refusal of some other application. For one thing, a term that is so widely used in 2020 that it fails to function as a source indicator, may not be so popular five years later.

Okay.

Here’s the thing, though.

There are some terms that will always fail to function for novelty goods (T-shirts, glassware, journals, stickers, etc.) no matter what year it is. Unfortunately, some of them are already registered trademarks. Others keep turning up, like a bad penny.

  • eggspecting / Egg Specting / Egg-Specting (pregnancy puns never die y’all) – two of these were published for opposition, the third was suspended pending the outcome of the other marks due to “Likelihood of Confusion” (I am not making this up! See SNs 86924316, 87030334, 87159196)
  • Mama Bear [SNs 86923714 (shirts), 87058048 (shirts), 86901959 (shirts), 88011770 (totes)] – y’all, this fails to function for shirts, totes, socks and the rest of it. And it always will. Goldilocks isn’t leaving our culture anytime soon. But until USPTO has a way to mark it “Zero chances for novelty products,” business owners have to continue monitoring and protesting this term that should be a “No-brainer No.”
  • Best Mom Ever – this was refused once, but there’s no guarantee it will be refused in the future. And, all of USPTO’s efforts to raise awareness and extra training notwithstanding, I’ve seen too many “TMEP wiggle room” approvals to take it for granted an application will be refused, no matter how obvious.
  • Someone in Boston Loves me!! (SN 86389859) – and in California (86389891)! And Colorado (86389887)! And Florida (86389882)! And New York (86389877)! And Texas (86879292)! Puh-leaze. These do not indicate source. Why can’t there be a way for the attorney to create a “blanket refusal” and have the system trigger it if an application fits the formula?
  • Jesus Loves You (SN 86260523) – yes, He does, and He doesn’t like that message being restricted to ONE person as if they are the source of it, people! Seriously! Check out the first specimen for JESUS LOVES YOU and then explain to me how it managed to get registered as a trademark? I’ll tell you how. With a second specimen for JESUS LOVES YOU, featuring a tag. The examining attorney’s initial refusal explained how to overcome the Merely Ornamental part of it. The refusal was also based on the likelihood of confusion with SN 3686884 (JESUS LOVES YOU TOO – for clothing), which was later canceled. Not because it failed to function as a source indicator. Only because the owner had stopped producing goods using the “mark.”

This is only the tip of the iceberg. And please don’t take this personally. I love y’all, I really do.

It just makes ZERO sense to me that examining attorneys should have to waste one minute of time reviewing an application that consumers would perceive as a novelty slogan, not a brand.

And it makes less sense that any one person or company should have a monopoly on these types of phrases without proving some level of acquired distinctiveness. (As in, Nike ran ads galore until they became known for “Just Do It.” That’s an example of acquired distinctiveness.)

End of rant. Sort of. In Part 10 we’ll tackle the biggest issue of all: System Bias Caused by The Halo Effect.

This is Part 9 of a 10-Part Series. If you missed previous installments select from the list below to read the rest of the series.

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