Trademark System Bias


Welcome to a series about the threat and impact of questionable trademarks.
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Trademark System Bias, Part 05f: Make Trademarks Great Again

This post explores how faulty trademark registrations birthed from viral expressions lead to more of the same.

Make America’s Trademarks Indicate Source Again

Ever since President Donald Trump’s “Make America Great Again” campaign took off, USPTO has answered hundreds of “Make America” trademark applications. (Most use the “Make America ___ Again” formula.) Here are thirty-three “Make America” phrases that are registered trademarks for clothing. Let’s make “trademark” mean “source indicator” again.

Serial No.
Trademark
Registration No.
88395646ACTUALLY MAKE AMERICA GREAT6022104
88437177MAKE AMERICA 2008 AGAIN5887413
87316922MAKE AMERICA AMERICA AGAIN5434465
87247066MAKE AMERICA BAIT AGAIN5745986
86884414MAKE AMERICA CHRISTIAN AGAIN5138826
87607632MAKE AMERICA COWBOY AGAIN5583832
87647993MAKE AMERICA CRIP AGAIN5584067
86949391MAKE AMERICA DRINK AGAIN5198198
87315328MAKE AMERICA FISH AGAIN5220119
87373165MAKE AMERICA FRESH AGAIN5327180
86955655MAKE AMERICA GAY AGAIN5174815
87640172MAKE AMERICA GAY AGAIN5423542
88313491MAKE AMERICA GENIAL AGAIN5922731
87980844MAKE AMERICA GET RID OF HIM5801960
88074014MAKE AMERICA GRACIOUS AGAIN5904620
87587829MAKE AMERICA GRATEFUL AGAIN5846093
88323003MAKE AMERICA GREAT FOR EVERYONE5922750
88305464MAKE AMERICA GREY AGAIN5844336
87241293MAKE AMERICA HIPPY AGAIN5274785
87642380MAKE AMERICA HOPE AGAIN5588948
88204408MAKE AMERICA PRAY AGAIN5853385
88204018MAKE AMERICA PURPLE AGAIN5987559
87003415MAKE AMERICA SANE AGAIN5090487
87723795MAKE AMERICA SEXY AGAIN5471799
87923969MAKE AMERICA SHARP AGAIN5957994
87105939MAKE AMERICA SMART AGAIN5292469
87369117MAKE AMERICA SMOKE AGAIN5333809
88205542MAKE AMERICA STOP HATE5793210
88306742MAKE AMERICA UNIFIED AGAIN5963603
88306629MAKE AMERICA UNITED AGAIN5963602
87914743MAKE AMERICA VEGAN AGAIN5738002
88472883MAKE AMERICA WEAK AGAIN5944111
MAKE AMERICA GREAT AGAIN spin-offs, all registered trademarks for clothing

Some Slogans Might Be Good…

Some spin-offs are appropriate taglines for brands. For example

  • MAKE AMERICA SHARP AGAIN for Emerson Knives
  • MAKE AMERICA FRESH AGAIN for Military Fresh Network
  • MAKE AMERICA PURPLE AGAIN for Uncle Purple dot com (except, my browser times out before connecting to the UnclePurple.com website, purple came to symbolize a unified political party in 2016, and makeamericapurpleagain.com is a one-page website with a Buy Now button that links to a Paypal checkout for $12.00)

Some Slogans Are Not-So-Good

Other slogans are instructive for examiners.

The MAKE AMERICA GREAT FOR EVERYONE (SN 88323003) specimen shows only the inside of a hat. On opposite sides of the headband are the labels OTTO® and “MAKE AMERICA GREAT FOR EVERYONE www.america-great.com.”

Make America Great For Everyone Specimen (SN 88323003)

The website home page shows three blank hat mockups with text overlay. The poorly-formatted text reads “MAKE AMERICA GREAT FOR EVERYONE” on two hats, and “HACER AMERICA GRANDE PARA TODOS” (an especially crummy Spanish translation of the phrase).

America-Great.Com (5/30/2020)

Frankly, I’m surprised america-great.com still exists. It’s not unusual for the applicant’s website to “disappear” by the time registration is complete. Having a website demonstrates “proof of use” to overcome those pesky ornamental refusals.

The MAKE AMERICA UNITED AGAIN (88306029) specimen shows a shirt on the Embrace Every Race website.

Make America United Again Specimen
Make America United Again Specimen (SN 88306629)

The examiner issued an initial refusal based on the “Informational Social/Political Message” nature of the mark but later withdrew it. Apparently they were swayed by the applicant’s attorney, who wrote:

Registration 5887413 (serial no. 88437177) for “Make America 2008 Again” involves a situation just like this one. In a note to the file the examiner states the mark is used on hats and can be perceived as a political slogan and as such is ornamental and cannot be registered on the principal register. It seems obvious that this mark is related to the election of President Obama and the feelings and values associated with his election.
However, the examiner did offer to amend it to the supplemental register and did so. The registration certificate is in the file for this mark, which is of the same nature as the one at issue here.
Registration 5793210 (serial no. 88205542) for “Make America Stop Hate” involves the mark being placed on athletic apparel, shirts, hats, etc. This also could be said to be an informational, social and political kind of message. That is no different than the type of mark applied for here.
Given these registrations there is precedent for a mark like the Applicant’s to be amended to the Supplemental Register as in Registration 5887413 and 5793210. To not do so would be fundamentally unfair to Applicant since its mark is no different from the two discussed in these cases. A copy of the relevant applications, notes, amendment and registration certificates are included in the evidence section.

MAKE AMERICA GREAT AGAIN (SN88306629), Response to Office Action

Hmm. So since “Make America 2008 Again” and “Make America Stop Hate” were allowed to be registered on the supplemental register, USPTO should continue registering more political slogans so everyone can be happy.

That’s strange any attorney would even suggest such a standard. Because even a homeschool mom knows prior registrations are not controlling. At least, they’re not supposed to be.

Oops. There I go with the legalese again. “Prior registrations are not controlling” is the fancy way of saying, “Two wrongs don’t make a right.”

See In re Cordua Rests., Inc., 823 F.3d 594, 600, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016) (“The PTO is required to examine all trademark applications for compliance with each and every eligibility requirement . . . even if the PTO earlier mistakenly registered a similar or identical mark suffering the same defect.”)

1216.01 Decisions Involving Prior Registrations Not Controlling

Not content with their first design, the owners applied to register a similar mark using a similar specimen, MAKE AMERICA UNIFIED AGAIN (SN 88306742).

Specimen for Make America Unified Again (SN 88306742)

Just as MAKE AMERICA UNITED AGAIN was initially refused for ornamental use, MAKE AMERICA UNIFIED AGAIN was also initially refused for ornamental use.

And, unsurprisingly, applicant’s attorney submitted what appears at first glance to be the same response to the Office action, and got the same result. Both are now registered trademarks.

So, as long as there are other registrations on the Supplemental Register (in violation of Tammy TMEP’s clear directive in TMEP 1202.04) USPTO is expected to continue the practice. And they are doing so. Maybe you don’t recall what Tammy said. Here again are some salient quotes:

Messages that are used by a variety of sources to convey social, political, religious, or similar sentiments or ideas are likely to be perceived as an expression of support for, or affiliation or affinity with, the ideas embodied in the message rather than as a mark that indicates a single source of the goods or services. Furthermore, goods that feature such messages are typically purchased because of the expressive sentiment conveyed by the message and not because they serve as a means for the consumer to identify and distinguish the applicant’s goods or services from those of others…

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…

Any evidence demonstrating that the public would perceive the wording merely as conveying the ordinary meaning of the message, or enthusiasm for, affinity with, or endorsement of the message, supports this refusal… 

The size, location, dominance, and significance of the wording as it is used in connection with the goods or services should also be considered to determine if any of these elements further support the perception of the wording merely as an informational message rather than as indicating the source of goods or services. 

It’s worth noting, an Ornamental refusal often – very often – apparently causes the examiner to downplay or even ignore the Merely Informational aspect of the refusal. What should be listed as a separate, insurmountable legal basis for refusal is often rolled into the weaker but more obvious one.

Given the time pressure and mounting paperwork faced by examiners, this choice is understandable. But it leaves the door open to overcome a refusal that shouldn’t be up for discussion (at least if examiners are to comply with TMEP 1202.04).

Maybe you’d like to see these “source indicators” side by side:

Specimens for MAKE AMERICA UNITED AGAIN (SN 88306629), MAKE AMERICA UNIFIED AGAIN (SN 88306742)

These marks demonstrate there is a systemic problem, a bias toward faulty registration. Unless it is corrected the trademark register is destined to be littered with much more flotsam than this.

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