They say a picture is worth a thousand words. Here are two lists of trademark applications to use for viewing trademark Letter of Protest samples. Each of these applications was refused for registration after Pat Protester submitted a trademark Letter of Protest with relevant and reasonable evidence that the terms were ineligible for registration. There are even some sample evidence index pages for you.
While the trademark applications listed below are for goods and services in the print-on-demand industry (novelty goods like T-shirts, pop-sockets, mugs), trademark Letter of Protest evidence relevancy principles are valid across all types of goods and services. Here’s the goal: to show the term in widespread use on similar goods and services such that the average consumer or target audience would not perceive it to be a “source indicator” (brand).
Evidence will look different in different industries. See either protest against the N95 applications for an example of a “non-novelty” protest.
Pre-publication Letter of Protest List
The first list includes a few of the roughly 150 pre-publication trademark Letter of Protests that were filed in the first year of Trademark Watch Dawgs. Pre-publication protests have a fairly low evidence standard to meet. Many protests were accepted that had much less evidence than is shown in the examples below. I picked these because they (mostly) meet Joe’s suggested evidence standards, and because they are already fairly saturated markets. As I explained in the Trademark System Bias series, creatives are reluctant to share specific examples of frivolous trademarks because doing so increases competition exponentially.
- BRIDE SQUAD (SN 88005971) – best example of Joe’s recommended evidence standards
- N95 (SN 88790438) – for face masks
- N95 CERTIFIED (SN 88790493) – for face masks (USPTO said the parts of Pat Protester’s evidence that did not include “certified” were discarded, but a second protester included relevant evidence and the two protests were combined)
- MAMA SHARK (SN 88127110) – evidence from Amazon, Etsy, Redbubble (Sellers take note: this reference to Discovery Channel’s Shark Week probably violates platform IP policies and can get your account suspended, whether or not DC cares.)
- TEAM JESUS (SN 88105154) – evidence from Amazon, Etsy, Walmart
- *THE LUCKY FEW (SN 87712117) – evidence from Amazon and Etsy
*This one is significant because a pre-publication Letter of Protest stopped an application that was approved for publication. In other words, USPTO’s attorney only needed a tiny bit of evidence to stop it. Without the trademark Letter of Protest, a faulty trademark to monopolize novelty products for the Down Syndrome market would most likely have registered.
Post-publication Letter of Protest List
This second list gives five of the post-publication protests filed by Pat Protester and Trademark Watch Dawgs. See Part 07c of my Trademark System Bias series for more post-publication protests that showed USPTO staff attorneys made a Clear Error when they approved these ineligible trademark applications for publication in the Trademark Gazette.
Each of these marks “fail to function” as source indicators. That’s legalese for “Ain’t no shopper sees this describing a bracelet or decorating a T-shirt and thinks it’s a brand, Y’all.”
I think I’ve listed these in the order the protests were filed with USPTO. We learned as we went along (thanks to Joe and other USPTO Attorney Advisors who graciously answered our questions). So the “best” sample evidence is in the last three.
- HODL (SN 87597378)
- FELIZ NAVIDOG (SN 87649609) – I helped make the index; Joe said “An index like this is what we need.”
- I’M KIND OF A BIG DEAL (SN 87772719) – a happy win for small creatives against a big corporation
- AFFIRMATIONS (SN 87859333) – a generic term nearly registered! Yikes!
- LIKE A BOSS (SN 88090544) – index screenshots below
How to use these lists
Open a separate tab at tsdr.uspto.gov
Copy the Serial Number from the list below and paste it into the empty field (I’m using “87597378” from HODL in this example).
Click on “Status” if you want to make sure you’re on the right application:
Click on “Documents” to see the public documents for the application. Look for “Administrative Response.”
Our “HODL” example has two entries. The first, dated March 21, 2018, is a Request for Jurisdiction Memorandum.
Most protests won’t trigger this form, because it’s only used for trademark applications that were already “published for opposition.” This form is basically legalese asking the boss (aka Commissioner of Trademarks) to return the file to the USPTO lawyer (Examining Attorney) who approved the trademark application, because somebody awesome like YOU sent in evidence to show the trademark application should not be approved, so of course they want to fix the mistake!
The second “Administrative Response,” dated March 27, 2018, is the Letter of Protest Memorandum.
This is the “cover letter” for the evidence that is being sent to the Examining Attorney. View the evidence by clicking on either the “Next Page” in the top right corner or the “Download PDF” button just above it.
Things to realize or notice
When looking at trademark Letter of Protest samples, here are some things to keep in mind:
- Every page of evidence should be annotated with the source URL and the date accessed.
- There should be nothing in the evidence to identify the protester; it must be anonymous, objective evidence.
- Relevant words on products and in product descriptions must be legible.
- Single product pages are preferred over search results with many products.
- Unless the products all display an exact match of the term, you run the risk of the entire page being tossed, because highlighting relevant products or text on the actual evidence is a no-no.
Post-publication Trademark Letter of Protest Evidence Index Sample
An index for evidence in support of a post-publication trademark Letter of Protest is strongly recommended by USPTO. (It might be required with the most recent rule changes.) But publicly-viewable trademark Letter of Protest evidence does not include any index of evidence that may have been submitted. So I’ll include a couple of examples here.
My first indexes (HODL and FELIZ NAVIDOG) took hours. Later, I was able to generate better indexes automatically with Airtable.
The Airtable-generated index is nicer, because it includes thumbnails and the ability to quote relevant excerpts to make review by the Attorney Advisor easier. The full index is around 15 MB, too big for my little website to host, so I’ll put up some screenshots instead. Evidence progresses through a logical order of meaning, cultural relevance, then products.
Your evidence index doesn’t have to look like this. I just wanted to show you what’s possible. If you were an Attorney Advisor with a gazillion tedious things to do, wouldn’t you like to see something like this that saves you time? Just think how easy it would be to weed out irrelevant content (which hopefully doesn’t even exist, but it could!).
After showing the meaning of the term, the index shows how it is used in marketing. Next, products that are decorated with the term are grouped by priority: first box stores like Home Depot, then Amazon and Etsy.
The Examining Attorney won’t see the Index of Evidence. It’s purely for the Attorney Advisor, who decides which pages of evidence are relevant. Anything that doesn’t meet the evidence rules goes in the trash (I think!).
Are you preparing a trademark Letter of Protest? If the mark is for products in the print-on-demand industry, I encourage you to coordinate with a group like Trademark Watch Dawgs to avoid duplicate protests. USPTO rules say that more than five protests against the same mark will be disregarded. Considering how many creatives are selling novelty goods and self-published books on Amazon and Etsy, there’s a good chance someone else could be filing a protest against the same mark that troubles you.
Do you have any questions for me? Comment below.