Trademark System Bias

Welcome to a series about the threat and impact of questionable trademarks.
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Trademark System Bias, Part 05g: Attorneys are Human Too!

In this post, you’ll learn why trademark attorneys are just as likely as creatives to apply for unregistrable trademarks, and who’s responsible for all the frivolous registrations.

USPTO now requires trademark applications be filed by attorneys.

“Yippee!” We cheer. “This will cut down on the number of ineligible applications!”

Um, hate to break it to you, but…

Attorney Advice No Guarantee of Registrability

Even decent legal advice (as found at Legal Zoom and Chron) can be dangerous. That’s because it often fails to mention how to test the registrability of a word or phrase. Nobody talks about how consumer perception and use in commerce may render the term powerless as a source indicator.

Following guidelines such as these, a business owner may submit TWENTY trademark applications within a week’s time to “protect” the various slogans adorning their T-shirts, hoodies, PopSockets, party decorations, novelty balloons, etc.

(This actually happened. Fortunately for competitors, other people filed Letters of Protest, and USPTO issued refusals on each one. It’s only one of many similar cases where creatives are trying to “protect” their businesses but going about it the wrong way.)

Trademark Attorneys Often Submit Ineligible Applications

To be fair, the 20-applications-disaster was filed without benefit of an attorney. But it’s pretty easy to find attorney-prepared applications that also fail to function. As in, merely informational messages. Widely-used messages. Even generic terms. (See Part 7c for a sampling.)

Here’s another example: most of these goofy registrations were filed by attorneys.

Attorneys – even expensive trademark attorneys with strong credentials – can easily miss the industry-specific significance of a term. A word or phrase may be perfectly suitable for automotive parts yet unregistrable for PopSockets and T-shirts.

Requiring attorneys to file may lead to fewer refusals of ineligible applications. But it may also breed a bigger percentage of faulty registrations. After all, pro se applicants are more likely to make mistakes to tip off the examiner.

How many new registrations will be the result of savvy counselors jumping through legal hoops to register novelty slogans, aka informational messages? You know, some variation of BORN TO FISH FORCED TO WORK (SN 86336299)?

This begs the question: How many new applications can USPTO handle? What would happen if only 10,000 of Amazon’s Merch participants each filed 20 trademarks in the same week? But a greater volume of applications is not the only concern.

Who’s Responsible? USPTO’s Duty of Valid Trademark Registrations

According to our friend Tammy TMEP, the ultimate responsibility for faulty registrations rests squarely on the shoulders of the USPTO:

The USPTO has a duty to issue valid registrations and has broad authority to correct errors made by examining attorneys and other USPTO employees.

TMEP 706.01 “Clear Error”

The next section will review some of the steps USPTO is taking to ensure valid trademark registrations.

This is Part 5g of a 12-part series about the threat and impact of questionable trademarks. The next post is Part 6a.

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