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Letter of Protest Example: Bible Verse (Update)

Last updated on May 25th, 2020

Oh this makes me so happy!

Last summer I submitted a Letter of Protest against the trademark application for  “With God All Things Are Possible” (Serial Number 88331042). (See the redacted Letter of Protest here.)

Earlier this week I decided to find out what happened. 

Why I Submitted a Letter of Protest

Every time I submit a Letter of Protest, I have One LOP Why

Just like every other protest I’ve submitted, I have no skin in this game. No competing products. But I’ve seen the devastation that results when hundreds of business owners lose their products overnight. 

The Legal Basis for My Letter of Protest

Bible verses and other quotes from religious texts are not eligible for trademark. 

“With God all things are possible” is a direct quote from the Bible.

(Kinda sad that nobody at USPTO recognized this fact. Shame on us Christians for not having a greater impact on our culture.)

About Letter of Protest Deadlines

In my original post, I admitted I had low hopes of success. 

This trademark application was published for opposition on July 2. 

The trademark rules allow 30 days to file a post-publication Letter of Protest, making the deadline August 1. (“Thirty days, hath September…”) 

If the evidence included with that Letter of Protest shows a clear error was made, the Commissioner of Trademarks will return the file to the original examining attorney and tell them to reverse their decision. 

As I mentioned in my original post, I missed the 30-day deadline about 12 hours. 

And believe me, if you are one minute late on the deadline, your letter of protest will not be accepted. 

Kudos to USPTO for Sticking to Deadlines

This is another reminder that the USPTO’s top priority is to issue quality registrations as quickly as possible. They don’t want applicants being jerked around needlessly. This is a good thing, and you’d be happy about it if it was your application on the line. 

But I digress.

I Might Have Received a USPTO Response

I don’t think I’ve gotten a response from USPTO for this protest, which is a bit surprising. In the past they’ve sent a letter via snail mail to let me know the protest was accepted or rejected. If it was rejected, they gave the reason why. And yes, I’ve been rejected for tardiness.

To be fair, USPTO is transitioning to digital everything. It’s possible they sent an email to me. Since I nuked my inbox a few months ago in a fit of despair I’ll never know. 

(Don’t judge me. I am working on a system to automagically manage my inbox. But that hadn’t occurred to me at the time.)

Link to the Trademark Application Documents

You can access the records for this application at the trademark search document retrieval system (TSDR):

This is where you’ll see a list of all documents related to this trademark application.

My Letter of Protest was submitted online on August 2, 2019. Let’s dig into the record and see what we can learn: 

TSDR Status for “With God All Things Are Possible”

If you click on the Status button for this application, you’ll see that it is “DEAD.”

So let’s click on the documents tab and take a look at what happened.

July 02 – OG  Publication Confirmation

On July 2, 2019, this trademark application was officially “published” in the Trademark Official Gazette.

The “OG” is how USPTO complies with trademark law to notify interested parties that a trademark application is likely to be registered soon. 

This is the day the USPTO said, ”Dearly beloved capitalists, we are gathered online today in the presence of God to witness the joining together of a unique  expression or design and its rightful owner. 

“If anyone can show just cause why this couple cannot lawfully be joined together in holy trademarkimony, let them speak within 30 days or forever hold their peace, unless they want to fork out thousands of dollars in legal fees to fight it out in front of the Trademark Trial and Appeal Board or in federal court.

July 08 – Administrative Response

Somebody — not me — filed a Letter of Protest. This “Administrative Response” is the USPTO internal memo saying the protest was accepted. 

Yippee! 

Only, they used a legal basis which I have been told is inappropriate for Letters of Protest: absence of lawful use in commerce. 

When I tried that on my 035 Letters of Protest, that part of the evidence was refused because “This legal basis is only appropriate for a proceeding before the Trademark Trial and Appeal Board” (or words to that effect).

But, when different attorneys review protests, different decisions sometimes happen.

Why Inconsistent Responses Might Be a Good Thing

This inconsistency might be a good thing. 

It means USPTO attorneys are allowed some discretion in “gray areas,” based on their experience and application-specific facts.

Intellectual property law is incredibly complex and often convoluted. You may find as many different opinions about certain things as there are attorneys in the room. 

Why a Second Letter of Protest?

When I submitted my letter of protest on August 2, I don’t remember if the other letter protest was posted to the document list. Or, it might be it was posted, but I concluded it would not be enough to guarantee a refusal. Sorry, I don’t remember. 

Anyway, I’m glad I submitted my late Letter of Protest, because look what else the record shows…

August 14 – Paper Correspondence Incoming

Now here’s something I haven’t seen before: “Paper Correspondence Incoming.” 

This form asks the Director of the USPTO to return jurisdiction to the examining attorney. In other words, “Please send the application back to the attorney who erroneously approved the trademark, and ask them to fix their mistake.” 

This way, the same person who approved the application will go on record as refusing it. 

BTW, this form is different than most of the others I’ve seen. Usually the form requesting jurisdiction be restored comes from the Supervising Attorney to the Commissioner of Trademarks. In this case it’s one step higher; the Trademark Commissioner asking the Director of the USPTO to restore jurisdiction. I don’t know if this is a significant difference or not.

Why Examining Attorneys Make Mistakes

Lest you be tempted to rail on the poor attorney that was forced to change their decision, let me remind you of something: 

The Letter of Protest system exists because USPTO recognizes their dependence on industry insiders to share relevant facts so they can issue quality registrations. 

If the industry insiders don’t provide those facts early in the process, that’s not the fault of the examining attorney!

Learning is Always a Good Thing

This seems like a perfect time to remind you of a quote by W. Edwards Deming

I don’t recall where I heard it, but someone told the story of hearing Deming’s response to a critic. The naysayer accused him, “What you taught today is much different than what you said in your book.” 

It might NOT be an exact quote, but this is what the storyteller gave as Deming’s curt response:

“I will never apologize for continuously learning.”

W. Edwards Deming

So, yeah, let’s give examining attorneys permission to change their decision when they learn new facts.

August 22 – Office Action Outgoing

Here’s the significant language on the Office Action Outgoing document of August 22:

“Registration is refused because the applied-for mark is a slogan or term that does not function as a trademark or service mark to indicate the source of applicant’s goods and/or services and to identify and distinguish them from others.”

That’s the legalese way of saying, you can’t be trademarking the Bible, people. 

Seriously, nobody’s gonna look at a Bible verse on your product and think it’s referring to your company. 

It’s the Bible! 

March 4, 2020 – Notice of Abandonment

This Notice of Abandonment is a standard USPTO form that documents the applicant’s failure to respond to the Office Action sent on August 22. In other words, the applicant did not fight the refusal. 

BOOM!

I don’t know if it was my letter that clued somebody at USPTO in on the fact that this is a verse from the Bible. I’m just glad they figured it out. 

Chalk up another win for free markets!

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 5f: Make America's Trademarks Indicate Source Again

Part 5g: Attorneys Are Human

Part 6: USPTO Issues and Efforts

Part 7: Letter of Protest Challenges and Results

Part 8: Letter of Protest Lessons

Part 9: System Bias