Trademark System Bias


Welcome to a series about the threat and impact of questionable trademarks.
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Trademark System Bias, Part 05c: PTO’s Ornamental Advice

Learn how USPTO helps creatives register questionable trademarks by teaching them how to overcome an ornamental refusal.

Part 5c: USPTO Started It

In Part 5b, I pointed out how trademark attorneys encourage creatives to register novelty slogans as trademarks, and then teach them how to avoid an Ornamental refusal by simply adding a tag to their product specimen. To be fair, USPTO offers the same helpful “tag” advice on their website:

(1) Submitting a different verified specimen (a “substitute” specimen) that was in use in commerce at least as early as the filing date of the application… that shows proper non-ornamental trademark use in commerce of the same mark for the refused goods identified in the application…

Examples of the type of specimens normally acceptable for goods are tags, labels… [Emphasis added]

USPTO – “Ornamental” Refusal and How to Overcome This Refusal

Notice that both the Trademark Attorney in Part 5b and the USPTO imply that any T-shirt slogan is registrable.

It just has to be printed on a hangtag, Y’all!

Gad.

TMEP and T-shirt Slogans

My turn to share.

I’ll share Tammy TMEP’s philosophy about T-shirt slogans.

1202.03(f)(i)    Slogans or Words Used on the Goods

Slogans or phrases used on items such as t-shirts and sweatshirts, jewelry, and ceramic plates have been refused registration as ornamentation that purchasers will perceive as conveying a message rather than indicating the source of the goods

The phrase ‘I LOVE YOU’ conveys a term of endearment comprising the bracelet and, thus, it is ornamental…

customers purchase products with the phrase I ♥ DC specifically because they are ornamented with the phrase in an informational manner and that, given the phrase’s “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”

NO MORE RINOS! conveys a political slogan devoid of source-identifying significance…

BLACKER THE COLLEGE SWEETER THE KNOWLEDGE primarily ornamental slogan that is not likely to be perceived as source indicator…

SUMO, as used in connection with stylized representations of sumo wrestlers on applicant’s T-shirts and baseball-style caps, serves merely as an ornamental feature of applicant’s goods…

YOU ARE SPECIAL TODAY for ceramic plates found to be without any source-indicating significance…

“[T]he designation ‘ASTRO GODS’ and design is not likely to be perceived as anything other than part of the thematic whole of the ornamentation of applicant’s shirts….

DAMN I’M GOOD, inscribed in large letters on bracelets and used on hang tags affixed to the goods, found to be without any source-indicating significance. [Emphasis added.]

USPTO TMEP 1202.03(f)(i)

Hate to break it to all my creative friends out there, but your clever T-shirt slogan does not suddenly become a “source indicator” just because you printed a lovely hangtag.

Even if you bought the fancy paper at Hobby Lobby to print it on.

I’m telling you this cause I love you.

Don’t shoot the messenger.

What About “Just Do It” and “Life Is Good”?

Creatives and attorneys alike point to Nike’s iconic slogan as proof that T-shirt slogans are instant brands. “Besides,” they say, “LIFE IS GOOD is a slogan, and it’s a brand.”

They ignore three key facts.

Fact 1: Nike first use of “Just Do It” was in a bunch of TV commercials in 1987.

Fact 2: Nike’s first trademark application for JUST DO IT (in ONE class 025, clothing) was filed two years later, in 1989, and finally registered in 1995 (8 years after its “first use” in a multiple-ad campaign on TV). (Another application to register the mark for a variety of novelty goods was filed and registered around the same time. It was later canceled for lack of an acceptable Section 8 declaration of use.) Their other active registrations were filed in 2012 or later – 25 YEARS after they first used the slogan.

Fact 3: LIFE IS GOOD is often facing or filing expensive lawsuits because of their mark. Houston, we have a problem.

Let’s take a closer look.

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