Trademark System Bias

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How to Respond to Trademark Bullies

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A revamped version of a post from 2018.

IP Infringement Claim Response 

Have you received an email from the owner of a registered trademark telling you to remove your design? 

(Note: If the IP notice comes from the applicant for a new trademark, it’s probably best to respond with something like, “I see that your application has been filed, and if the mark is registered I will remove my listing immediately. Thank you for alerting me to this potential issue.” The applicant may never realize they should have waited until the mark was registered to file takedown notices, and their premature actions are an effective alert to others that a Letter of Protest should be filed.) 

If the mark is registered, here is a response that may dissuade the trademark owner from going after you (feel free to edit; I included the PS mostly for your benefit) 

[NOTE that if even if the mark is identical to your product, the owner cannot limit its use as long as you do not use it as a source indicator.]

_______________________________ 

Dear ____,

Thank you for bringing your trademark to my attention. 

According to records at USPTO, INSERT-REGISTERED-TRADEMARK is a registered trademark of INSERT-OWNER-NAME. No other registered marks or applications for registered marks are owned by INSERT-OWNER-NAME. 

My product contains no references to INSERT-REGISTERED-TRADEMARK or INSERT-OWNER-NAME as the source indicator on the item itself or in the product description/sales page. 

Furthermore, based on consultations with a knowledgeable friend who has had many interactions with attorneys from the USPTO it appears your trademark was registered in clear error as it is Merely Informational Matter. 

Merely Informational Matter fails to function as a mark to indicate source and thus is not registrable. This expression conveys a widely-used message that consumers are accustomed to seeing used in everyday speech by a variety of sources. [See TMEP §§1202.04 and 1202.04(b).] 

Finally, research on copyright law reveals that short phrases lack the creativity necessary for copyright protection. 

What you are doing is called tortious interference in the legal world. It is a practice that can land you in serious legal trouble, including not only the cancellation of your registered trademark but also penalties to replace my lost income and attorney fees.

If I am mistaken and you have registered a copyright for your design, please provide your copyright registration number so I may supply it when I refer this to my attorney.

Litigation is costly but I will seek further legal counsel if necessary to assert my rights to use this common phrase decoratively on my goods.

I am not interested in being your enemy and am willing to forget the whole thing if you will simply remove your complaint. Let me know how you would like to proceed.

With Kind Regards,

Joe Creative (your name) 

PS What you are attempting is also called “trademark bullying” and is an abuse of the trademark system. Please read more about it here: https://www.ipwatchdog.com/2015/07/16/trademark-bullying-defending-your-brand-or- vexatious-business-tactics/id=59155/ 

The referenced sections of the USPTO Trademark Manual of Examining Procedure are online here: https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP- 1200d1e1927.html 

Specific case law examples of Merely Informational Matter and/or Widely-Used Terms that fail to function as source indicators include: 

  • I {heart} DC for bags, clothing, plush toys
  • ONCE A MARINE, ALWAYS A MARINE for clothing
  • SPECTRUM for illuminated pushbutton switches
  • DRIVE SAFELY for automobiles
  • THINK GREEN and design for weatherstripping and paper products
  • PROUDLY MADE IN USA for electric shavers
  • WATCH THAT CHILD for construction material
  • FRAGILE for labels and bumper sticker
  • WHY PAY MORE! for supermarket services, relying on specimens that showed use of the slogan in phrases such as “Why pay more for groceries?” and “More meat for less. Why Pay More?”
  • THINK GREEN for products advertised to be recyclable and to promote energy conservation
  • NO MORE RINOS! (a political slogan)

Further, the courts have ruled, “Derivatives or variations of widely used messages also fail to function as marks if they convey the same or similar type of information or sentiment as the original wording.” Examples include: 

  • BRAND NAMES FOR LESS failed to function as a mark based evidence of widespread use of similar marketing phrases; 
  • PROUDLY MADE IN THE USA (the addition of “Proudly” before the common phrase “Made in USA” merely added “further information ..”)
  • I {heart} DC (informational significance was “reinforced by the fact that similar expressions in the form of ‘I {heart} __’ have also been widely used to express such enthusiasms with respect to other places and things”). 

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©2020 by Morgan Reece. This post is available for reprint, remix, and build upon in accordance with the Creative Commons 4.0 Attribution-Share Alike license.

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