Trademark System Bias


Welcome to a series about the threat and impact of questionable trademarks.
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Trademark System Bias, Part 05a: Bad Trademark Advice

In this post, you’ll learn why so many T-shirt slogans are erroneously registered as trademarks.

What do you get when you cross unlimited slogans with misguided creatives and give everybody loopholes? An endless parade of faulty trademark registrations.

Novelty Slogans, Misguided Creatives and Trademark Attorneys

One of the challenges USPTO faces is that of the “slogan” applications generated by novelty producers, and the widespread belief that trademark offers nearly unlimited protection for such expressions. Misinformed and misguided creatives seek trademark registration for novelty slogans, hoping to “protect” their products from copycats.

There are already tens of thousands of such sellers on Amazon’s “Merch” platform alone. Google searches for “Print on Demand” are rising. The potential number of ineligible applications generated by print-on-demand sellers – where each business may produce thousands of unique novelty expressions – is nearly impossible to overestimate.

USPTO is drowning in paperwork. Yet such applications are likely to increase due to the low barrier to entry into print-on-demand. And that’s not all.

Misinformation among creatives and their “trademark” attorneys will likewise continue to spawn ineligible applications.

Aside #1: define Trademark Attorney

Throughout this series, likely as not I’ll use quotation marks to remind you of something important:

There’s no such thing as a “Trademark” Attorney. At least, not the way most laypeople think of it.

Medical doctors can get lots of letters after their name to indicate certification in a specialty (OB/Gyn, DO, etc.). Often people assume things work the same way in the law profession: lawyers undergo specialized training and testing to qualify in a specialty like Bankruptcy, Criminal Law, Trademark Law, and so on, right?

Wrong.

That’s not how it works.

“Trademark Attorney” is a Self-Appointed Label

Any attorney can call themselves a “Trademark Attorney.” Some are good, some not so good. Some appear to be cranking out trademark applications with either no competence or no conscience. Applications that are obviously doomed for rejection, but “attorney fees do not include trademark search, which is available for an additional fee.”

So the hapless client pays legal fees to some [pardon me while I try to think of a nice way to say “incompetent opportunist”] who will “properly complete the application” for a term that will be rejected within minutes of the examiner looking at it.

If I sound frustrated, yippee. You’re very astute.

There’s something wrong when a homeschool mom of six can spot an attorney-prepared, ineligible application at a glance (even before reading the examiner’s refusal). No, I don’t have a list. And if I did, I wouldn’t share it. Because my goal is not to shame or embarrass anyone. Let me repeat:

The system bias toward faulty trademark registrations is a system bias toward faulty registrations.

Yes, I said it twice for emphasis. System bias.

Aside #2: “Incompetent Trademark Attorneys” Aren’t the issue

To be clear, I’m not saying any of the attorneys referenced in this series are incompetent. Only that, based on conversations with others in the industry, and on applications I’ve stumbled across, the disconnect between “trademark law competency” and industry-specific application of trademark law… it’s a problem. Yet, it’s not the only problem. And it’s not the real issue.

Ineligible trademark applications are not the fault of greedy, careless trademark attorneys. And questionable or erroneous registrations are not the fault of incompetent USPTO examiners or any other single group or person. The main issue is the overall system bias. All the contributing factors can be improved.

People can grow. Private attorneys can and should have enough integrity to learn about the industries of their clients. And creatives can learn to vet their attorneys before plunking down gobs of money to be flushed down the proverbial toilet.

Now, back to our regularly-scheduled program.

Misguided Creatives and Trademark Attorneys

Creatives as a general rule are misguided and misinformed. (I can say that ’cause “Ah iz one.”)

We’re encouraged by peers and “trademark” attorneys (like those at LegalZoom and independent lawyers) to “protect” our “brands” by registering novelty slogans and designs as trademarks.

Here’s an example of the information creatives depend on:

How to Trademark a T-shirt Slogan Step By Step Guide

This is a guest post by a “Senior Trademark Attorney.” Here’s the first section:

The proliferation of print-on-demand t-shirt services such as Merch by AmazonCafePress, and Zazzle means that anyone with an internet connection can be a fashion designer. But with this ease also comes the risk that someone will copy your design and post it on a different site. Or even that you may find yourself inadvertently infringing someone else’s design.

So what can the aspiring designer do to protect his or herself?

The two main types of intellectual property protection that cover t-shirt design are trademark and copyright. For the purposes of this article, I will focus on trademark law. Do understand though that designs may also be copyrighted provided they meet the requisite standards of sufficient original expression.

Please don’t miss the key points in this title and introduction. Readers are learning:

  • How to trademark a T-shirt slogan
  • Designers “risk that someone will copy your design and post it on a different site”
  • This article will teach designers how to “protect their designs” with trademark registration

Moment of silence for USPTO examining attorneys forced to wade through thousands of ineligible applications.

Unintended Consequences

To be fair, I don’t think this was the intent of the trademark attorney who wrote this article. It’s another example of how trademark attorneys often don’t understand what or whom they’re dealing with when it comes to print on demand.

In the context of the entire article, this attorney is trying to help people who want to build a brand protect their intellectual property from the start.

Awesome. Seriously.

If I could count up all the money I wasted, trying to start a business but doing things out of order and not setting protective measures in place from the beginning, well… let’s just say the school of hard knocks is pretty expensive.

So let’s give this attorney the benefit of the doubt. I don’t think she’s recommending anybody to go out and trademark a bunch of T-shirt slogans. But because she doesn’t address failure to function, that’s exactly what’s going to happen.

Evidence of Bad “Trademark Attorney” Advice

This article is not the only bad “trademark” attorney advice to be found.

One business owner I know filed several trademark applications for her T-shirt slogans on the advice of her trademark attorney. Each one was refused due to its failure to function as a source indicator. (Identities withheld to protect their reputations.)

Bad Applications Never Die…

Update: I noticed those applications aren’t dead. She got a new attorney and is vigorously pursuing trademark registration for phrases that are absolutely, unquestionably, quite obviously T-shirt slogans. I’m not gonna call her out. But for example, it would be like me taking a favorite expression that we used back in high school, “Feelin’ Fantabulous“ and registering it because, after all, I “coined” it, so now it’s a source indicator for my brand. Give me a break.

Later I’ll show you five significantly-harmful applications that were prepared by “trademark” attorneys (including some “big guns”). They’re just some of the cases in which USPTO refused registration after accepting post-publication Letters of Protest. These protests provided evidence that USPTO’s examiners made clear errors in approving the marks for registration.

Back to the “Step By Step Guide”

So what are the steps the article above suggests to help creatives get a trademark “step by step”?

  1. Clearance search – to make sure there are no similar phrases already registered. Okay. That’s a good start. But you didn’t mention, a similar mark in a coordinated class might be an issue, or how to do a trademark search.
  2. Application – USPTO now requires attorney assistance. But that’s not a whole lotta help. (Don’t hate me. I love attorneys. My dad was an attorney. It’s just that they can be pretty… um… how you say? Clueless? If you’ve only got a hammer everything looks like a nail.)
  3. Proof of use (specimen). So far so good.

Now we come to the meat of the article. Learn how to overcome an Ornamental Refusal in Part 5b (and why I really wish you wouldn’t).

This is Part 5a of a 12-part series about the threat and impact of questionable trademarks. The next post is Part 5b. Or see below for a complete list: