This post is fine on its own. For a much longer discussion of this topic, see my Trademark Beach Story series.
…the mere use of the “TM” or “SM” notation, in and of itself, cannot transform an unregistrable term into a trademark or service mark. See In re Volvo Cars of N. Am. Inc., 46 USPQ2d 1455, 1461 (TTAB 1998).USPTO Trademark Manual of Examining Procedure, §1202.04, paragraph 3
Frivolous trademarks are applications or registrations which may be used to control the use of phrases. Owners bully their competition with frivolous IP infringement claims to achieve a monopoly. It’s a subjective term coined in the Merch By Amazon seller communities to identify terms that either:
- “fail to function as source indicators” — in other words, the relevant consumer would not recognize the term or phrase as a brand or source, only as a popular social, political or informational message or slogan (examples: I LOVE DC; BOSTON STRONG; BEST MOM EVER); or,
- are descriptive of a certain niche (BASKETBALL) or user (DOG MOM), or are used as key terms used across many niches (PERFECT GIFT; FUNNY AND UNIQUE).
Like trademark trolls, questionable trademarks occur in every industry (examples: DRIVE SAFELY (for automobiles); ONCE A MARINE, ALWAYS A MARINE (for clothing)).
In contrast, “legitimate trademarks” are those that would be recognized as a brand by consumers.
To reiterate: questionable trademarks are those which may be used by trolls to chill competition. Not all applicants/owners of questionable trademarks are trolls; some are just trying to protect themselves. I could give many examples, but that’s a longer post for another time.
Merch and Etsy sellers must be on constant guard against trolls and questionable trademarks or risk losing valuable assets. The trolls are out there. Are you ready?
Frivolous Trademarks Matter
Suppose you are doing keyword research on MerchInformer or TradeMerch.io. You find a great niche like “best mom ever shirt” but a quick search at USPTO reveals a pending application to register “Best Mom Ever” as a trademark for shirts. In 2017, that was the end of the story for you. Move on to another niche. But that’s not true anymore, especially if it’s a new application. You can file a Letter of Protest with USPTO against questionable trademarks like this. It’s free, takes only a few minutes. Dave Cadoff has an excellent post explaining the basics.
Or, suppose you receive an IP infringement notice from Amazon or Etsy, but when you compare your design to the supposedly infringed product, you see it is merely a variation of the same slogan (or worse yet, the trademark is of a common word frequently used as a design element). The claim would never hold up in a court of law! Yet without the right knowledge, you’d be stuck.
Even though the infringement claim is ridiculous, Amazon and Etsy are unable to help you. Get enough of these frivolous claims and you may lose your account. I’ll show you how to dig up the information you need to compose and articulate and compelling response to persuade that bully to withdraw their complaint.
Frivolous trademarks put your entire creative business at risk. That’s why I’m moving my FREE resources to this site, so they will be accessible to all who need them. No membership or email sign-up required.
Disclaimer: I’m not an attorney, just a homeschool mom with a passion to help protect creative freedom in the marketplace. I’m squeezing this in alongside my God-given responsibilities, so thanks in advance for your patience. Keep up with the latest via my Facebook page, or sign up for my best content.