Trademark System Bias

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

This post explains how savvy creatives and trademark attorneys easily overcome an ornamental refusal for questionable trademark applications and why it matters.

Part 5b: Ornamental Refusals and Red Oceans

The (trademark attorney) author of a step-by-step guide that teaches creatives how to trademark a T-shirt slogan explains that large designs will most likely receive an ornamental refusal. And then she asks the magic question…

So what might be some ways to overcome the ornamental refusal?

How To Trademark A T-shirt Slogan – Step By Step Guide

You know where this is going, don’t you?

Oh, yes.

Yes, she is.

She’s going to explain how to overcome an ornamental refusal the easy way: add a hangtag!

Perhaps the best way to overcome an ornamental refusal would be to submit a substitute POU showing actual use of your mark in connection with t-shirts. The design may be ornamental on the t-shirt, but if it also appears on the tag or label, then this would be a proper trademark use because it would show source or origin of the t-shirts. [Emphasis added.]

How To Trademark A T-shirt Slogan – Step By Step Guide

(POU = Proof of Use)

Proof of Use, Consumer Perception, and Red Oceans

Let’s share, shall we?

This “Senior Trademark Attorney” shared her view that “if it also appears on the tag or label, then this would be a proper trademark use because it would show source or origin of the t-shirts.” [Emphasis added.]

Her view is shared by many trademark attorneys. And I understand why they think that.

It’s just not always true.

Don’t believe me? Here’s what Tammy TMEP has to say:

[The] mere use of the “TM” or “SM” notation, in and of itself, cannot transform an unregistrable term into a trademark or service mark… 

the critical inquiry in determining whether a mark functions as a trademark is the “commercial impression it makes on the relevant public…”

Because the nature of the phrase [I ♥ DC] will be perceived as informational, and also because the ubiquity of the phrase . . . on apparel and other souvenirs of many makers has given it a significance as an expression of enthusiasm, it does not create the commercial impression of a source indicator, even when displayed on a hangtag or label. [Emphasis added.]

USPTO TMEP 1202.04 Merely Informational Matter

I’ve tried explaining these points to creatives and attorneys alike. Sad to say, many have a “So what?” attitude.

“What difference does it make if I register a slogan that consumers would think is just a funny saying? I’m not hurting anyone, I’m just protecting my intellectual property!”

Why Mere Slogans Should Not Be Registered

Here’s the problem:

Sellers can lose hundreds of products at once because of overreaching IP infringement claims by the owner of a single keyword-rich trademark.

I know that was a mouthful. Lemme try again.

Suppose I get a single trademark: DEPLORABLES. (I’m making this up as I go. Well, I could be. I mean, really, what are the chances of a viral political term like DEPLORABLES being registered? ?)

On Amazon or Etsy, I can then request removal of:

  • “Proud Member of the Basket of Deplorables”
  • “Deplorables Team”
  • “Raising Deplorables”
  • “Deplorables Unite!”
  • “Texas Deplorables Unite!”
  • “Florida Deplorables Unite!”

And so on.

But it doesn’t take trademark overreach for sellers to lose profitable products.

Let’s hear from Dr. Roberts again:

Failure to function arises most often at the registration stage. And despite the dearth of discussion about it, registration matters. It matters because federal registrations cast tremendous shadows, tacitly enabling owners of registered marks to silence or bully competitors, new entrants, and entrepreneurs who lack the resources to fight back. It matters because registration instantly converts non-use or borderline use into a robust presumption of rights that is incredibly difficult to unravel. It matters because the mere existence of a registration affects which marks newcomers select; registrations that overprotect descriptive or thinly suggestive matter, in particular, burden a new entrant’s ability to communicate with consumers in the marketplace. And registration matters because by the time a mark becomes entangled in an infringement case, questions that arise early in the mark’s life, especially use as a mark and inherent distinctiveness, appear settled—the presumption of validity and the duration of the marks’ use often lead courts to treat those questions as resolved.

Alexandra J. Roberts, Trademark Failure to Function, 104 Iowa L. Rev. 1977 (2019) at Footnote 29

Questionable trademarks chill competition automatically (i.e. without any overreaching activity on the part of the owner) when competitors remove their products from the marketplace proactively in response to a new registration.

Product removal is required by Amazon’s and Etsy’s Content Policies when the product listing includes a registered trademark, even if the word or phrase is used in its ordinary sense, and even if the mark is registered in a different class of goods and services.

When a mere T-shirt slogan becomes a registered trademark, scores if not hundreds of competitors lose the right to sell their products on Amazon and Etsy overnight. We’re talking T-shirts, mugs, PopSockets, pencils, whatever. Any product in any class.

Moreover, because of the strict IP policies at Amazon and Etsy, products that display messages that are similar must be removed.

Y’all, this is a big, big deal. The product losses we’re talking about lead to a “bloody red ocean” (marketplace) as competitors are slaughtered by faulty trademarks. And it can happen without the owner of the faulty trademark doing a thing.

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