Trademark System Bias

Welcome to a series about the threat and impact of questionable trademarks.
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Trademark System Bias, Part 01b: A Cautionary Trademark Tale

This poem introduces a 12-part series that examines why so many questionable trademarks are registered, how it affects the print-on-demand industry, and what you can do to help. The links in the poem go to prose posts that explain things in more detail. Scroll to the bottom for an ordered list of posts.

At the Beach: A Cautionary Trademark Tale

Part 1: The Overview

Listen, my children, and you will hear
A tale that hearkens to Paul Revere
Although it dates back further still
To the Middle Ages and their guilds

It’s a saga written by a mom of six
Grieved by the trolls and all their tricks
Who longs to inspire you to not be robotic
(She needed structure for thoughts quite chaotic)

Our story begins near the ocean blue
At a beach full of tourists (and locals, too)
The sun shines bright, and the heat of the day
Makes some think of tea, and some, lemonade.

And the boardwalk is filled with people who think
They must quickly find something ice cold to drink!
To get the best value with them is a must
So they look for a name that they know, like, and trust

As they stroll down the boardwalk, they look to and fro
And see many names that they simply don’t know
“Tony’s Tea,” “Bob’s Beverages,” “Frank’s Lemonade”
What relief when at last a sign says “Chick-fil-A”!

Those others are dangerous folks you should know
Frank Fearful, Bob the Bully, and Tony the Troll
‘Cause two harmful trademarks are found at this beach
(‘Tho only one’s used for trademark overreach)

One’s a “trademark sword” trolls and bullies both wield
The other’s a big oversized “trademark shield”
(Frank’s not like the bullies and trolls who are hating
He just wants the freedom to keep on creating)

Part 2: Definitions

Tommy Troll brings his sword to the boardwalk each day
“COLD TEA” is his trademark, so restaurants must pay
Before they can list on their menu “Cold Tea”
They must pay to Tommy a licensing fee

But far worse is Bobby the big trademark Bully
“I LOVE LEMONADE” the sword he “protects” fully
“You must not infringe on my mark!” Bobby rages
“Lemonade’s in my name, so take it off your pages!

“Take it off of your menu and off of your ads!”
It’s obvious that Bobby the Bully’s quite mad
Thus, trolls license words for a fee, it is said
While bullies just slaughter till the ocean turns red

Trademark bullies and trolls file frivolous lawsuits
Frank Fearful bears no ill will, yet that point is moot.
For if you are wond’ring if Trademark Shields trample
Frank Fearful has one, let it be your example

“Lemonade Tea” is Frank’s Trademark Shield
It protects him! To bullies and trolls, he’ll not yield
But the other drink sellers must cower in fear
‘Cause Frank’s shield means “cease and desist” may be near

When words are held hostage that should remain free
Legit competition will drown in the sea
Trademark swords and shields ruin beaches and parks
And that’s why we call them both frivolous marks

Part 3: Gaming the System

Now, remember the guilds that I mentioned above?
A stamp marked their products, their labors of love
And this is the purpose of trademark of course
A trademark should indicate lemonade’s source

Yes trademarks are “stamps” that tell of the makers
Protecting the buyers from counterfeit fakers
A trademark’s a name that says who’s behind
The making of lemonade, squeezing each rind

For consumers want value, just as they should,
So they rely on trademarks to find what is good
But Bullies and Trolls share a different mission
To get trademark “swords” and chill competition

When Tony spies trends in the news or the culture
He snaps up a trademark, just like a vulture
And then rents it out for a licensing fee
To folks who design the PopSockets and Tees

While Bobby the Bully adds trademarks in phases
Fulfilling his plan to own widely-used phrases
“I LOVE LEMONADE” was first Bobby’s store
But then it was T-shirts, PopSockets, and more

For a Trademark “Shield” given in one trademark class
Makes getting swords easy, you just have to ask
Soon Tony applied for “LEMONS ARE MY GRIND”
And lemonade slogans of every kind

“KEEP CALM AND SQUEEZE LEMONS” is his favorite one
And “LEMONADE THERAPY” he claimed just for fun
Don’t worry, those marks have all been refused
Likelihood of Confusion” means they cannot be used

For Sammy the Shark beat Tony to the punch
It’s not the first time Sammy ate Tony’s lunch
‘Cause “I JUST LOVE COFFEE” is Sam’s sword, no lie!

“COFFEE-HOLIC” is the term Sammy “coined” long ago
So now he believes, “That’s my trademark, you know!”
These “brands” of Sam and Tony have lots of haters
‘Cause the “marks” fail to function as source indicators

And like Bobby’s swords in T-shirt trademark classes
They’ve got virtual monopolies to sell to the masses
While the constant threat of bogus IP infringement
Steals products and profits from the honest contingent

Part 4: Print On Demand, A Growing Industry

Could the blessing of print-on-demand be a curse?
For the “frivolous marks” problem now seems much worse!
And the barrier of entry to the industry’s so low
Almost anyone can do it, from anywhere, you know

There’s no cost to get started, no cost to stay in,
Just royalty payments when new designs “win”
Thus frivolous applications haven’t yet peaked
They might grow exponentially, even this week!

The benefits of keyword-rich products and brands
Make distinctiveness harder to pitch ‘cross the land
And sellers can select unlimited brand names
To win search algorithms, the ultimate survival game

And worst of all, Amazon’s and Etsy’s IP policies
Reward even frivolous marks, don’t you see?
But they don’t have a choice, lest their deep pockets are abused
They must answer for the marks their participants use

Part 5: Misguided Creatives, Ornamental Refusals, and Red Oceans (the Current System)

Now the challenges of print on demand are quite great
For there’s no end to slogans that one might create
And folks apply for terms that don’t indicate source
Misguided by trademark attorneys of course

They overcome refusals, turning oceans bloody red
Don’t blame them, they’re following what PTO said
And requiring attorneys to make applications
Won’t be of much help in this dire situation

For lawyers are humans, and they make mistakes
And often are dense when it comes to what makes
Terms fail to function for jewelry and T-shirts
So please don’t be mad (for sometimes the truth hurts)

Who gives out these marks? I’m so glad that you asked!
The Commissioner of Trademarks has this vital task.
With a team that examines trademark applications
He vouches for the quality of each registration

Part 6: USPTO Issues and Efforts (the Current System)

Lord Lanham Act tells them all what they must do
Lord Case Law teaches them law doctrine true
While Tammy TMEP is the bossy big sis
Who tries to explain, so the truth won’t be missed

Examining attorneys and attorney advisers
Try to decide each case for the wiser
But trademark law’s not just a simple equation
It must be applied to unique situations

And though Trademark “Stamps” are surely the best
New swords and new shields keep joining the rest
“Enough!” the Director told the Commissioner and Lords
“We must stop these Trademark Shields and Swords!”

And yet with so many services and goods
Attorneys don’t spot friv’lous marks as they should
Then someone decided that what would be best
Was to make a form they called a “Letter of Protest”

Part 7: Letter of Protest Challenges and Results

They made it available to all, everywhere
For industry insiders willing to care
At first, no one knew how to use that strange form
Protests were denied, and all were forlorn

It’s written in legalese, this much is true.
But it’s really the best they can offer to you.
They must be impartial, representing our nation
To meet the goal of issuing quality registrations

So questions were asked, advisers answered (of course!)
And protests became a most helpful resource
Thus all worked together for one common goal,
Protesters with the examiners of USPTO.

A way was made to avoid duplicate protests
And the process was perfected, all in the interest
Of supporting the Commissioner’s number one goal
To issue only valid registrations you know

Thus makers who once had been so abused
Began understanding terms like “widely used”
And “failure to function” and how to search TESS
Yet much work remains to clean up the mess

Part 8: Letter of Protest Loopholes

For as protesters worked certain things became clear
Lord Case Law confuses Tammy TMEP I fear
And not only that, the whole system leans toward
Handing out trademark shields and big trademark swords:

The loophole of specimen hangtags and labels
Trolls use to advantage not just in our fable
While consumer perception is often ignored
And phrases are registered as trademark swords

A T-shirt slogan has “informational significance”
When expressing enthusiasm or even diffidence
And similar expressions to these, it is clear
Ought not register (yet they oft’ do, I fear!)

For protesters are not allowed to express
The hint of an argument – it’s thought this is best
To keep the ex parte exam truly fair
But thus do examiners needlessly err

Part 9: Letter of Protest Problems (Keywords, Form Issues, and Rules)

Now, take AFFIRMATIONS and three MAMA BEARs —
Lord Case Law and Tammy TMEP seem unaware
Of their marketing significance in print on demand
And thus trolls and bullies nearly bloodied our land

The Letter of Protest is for bad mark resistance
But the form itself could use some assistance
For laypeople striving to properly use it
Can’t find the right Legal Basis to choose it

And though the trademark office may refuse applications
Creatives can’t rest in this greatest of nations
Since examiners don’t consider refusals of the past
With enough new applications, these may register at last

Part 10: The Halo Effect

And things have gotten worse with a decision of the Board
For new bullies will use it to demand bigger swords
We must also mention the Halo Effect
That leads to the trademark register being wrecked!

Part 11: USPTO Letter of Protest Fees

Now Petitions to Cancel are swamping the Board
Because applications for shields and swords
Were flooding the desks of examining attorneys
Who had to meet deadlines, the Commissioner to please

Attorney advisors carried some of the load
Yet trolls reaped more swords from applications they’d sowed
For the pressure of issuing registrations on time
Led to mistakes that are worse than my rhyme

All this has happened, while applications surge
And it seems the whole system is just on the verge
Of blowing the budget right before our eyes
Even Letters of Protest have seen a sharp rise!

And now who’s been blamed? Why, the trademark protesters!
For a scapegoat is easier to find than molesters 
Who can’t see the the errors of their bloody ways
And demand more swords while making protesters pay!

Yet look in the record, and you will find
Protesters have helped when examiners were blind
To phrases and words that indicated no source
Insiders spot failure to function of course!

As Dr. Roberts points out in the Iowa Review
The distinctiveness doctrine protects me and you
And if the Commissioner ignores her instruction
Trademark law itself will then fail to function

Thus protests are the linchpin to good registrations
Protecting free markets in our great nation
And requiring a fee for protests is short-sighted
Dividing a team that should be united

Remember to keep the main goal in mind
That registrations might all be of one kind: 
A stamp of the owner, a mark of the source
A name that means someone distinctive of course!

Part 12: Cleaning Up the Beach

So now here’s a plan to clean up the beach 
And drive from our land trademark overreach 
Let’s agree it will take time to implement, yes, 
But time’s worth investing for what is the best

First, raise awareness with attorneys — don’t laugh!
Whether for applicants or the Commissioner’s staff
They all need to learn how to see through the lens 
Of an applicant’s competitors and how things will end

Next start an aggressive outreach campaign 
To get what the Letter of Protest can gain
Industry insiders’ insight and assistance 
Saving PTO time with objective evidence

The battle’s not won, though the Commissioner’s fought it 
With fake specimen reporting and random audits 
So commit to the cause, no matter the cost
And clean up the system lest free markets be lost

This is Part 1b of a 12-part series about the threat and impact of questionable trademarks. The next post is Part 2. Or see below for a complete list: