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.
|ACTUALLY MAKE AMERICA GREAT
|MAKE AMERICA 2008 AGAIN
|MAKE AMERICA AMERICA AGAIN
|MAKE AMERICA BAIT AGAIN
|MAKE AMERICA CHRISTIAN AGAIN
|MAKE AMERICA COWBOY AGAIN
|MAKE AMERICA CRIP AGAIN
|MAKE AMERICA DRINK AGAIN
|MAKE AMERICA FISH AGAIN
|MAKE AMERICA FRESH AGAIN
|MAKE AMERICA GAY AGAIN
|MAKE AMERICA GAY AGAIN
|MAKE AMERICA GENIAL AGAIN
|MAKE AMERICA GET RID OF HIM
|MAKE AMERICA GRACIOUS AGAIN
|MAKE AMERICA GRATEFUL AGAIN
|MAKE AMERICA GREAT FOR EVERYONE
|MAKE AMERICA GREY AGAIN
|MAKE AMERICA HIPPY AGAIN
|MAKE AMERICA HOPE AGAIN
|MAKE AMERICA PRAY AGAIN
|MAKE AMERICA PURPLE AGAIN
|MAKE AMERICA SANE AGAIN
|MAKE AMERICA SEXY AGAIN
|MAKE AMERICA SHARP AGAIN
|MAKE AMERICA SMART AGAIN
|MAKE AMERICA SMOKE AGAIN
|MAKE AMERICA STOP HATE
|MAKE AMERICA UNIFIED AGAIN
|MAKE AMERICA UNITED AGAIN
|MAKE AMERICA VEGAN AGAIN
|MAKE AMERICA WEAK AGAIN
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.”
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).
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.
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.MAKE AMERICA GREAT AGAIN (SN88306629), Response to Office Action
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.
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).
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:
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: