Trademark System Bias

Welcome to a series about the threat and impact of questionable trademarks.
Scroll to the bottom for an ordered list of posts, or go to the Index.

Note for New Visitors: I'm not an attorney and you are not my client. Learn more about getting legal help here, and more about this site here.

Trademark System Bias, Part 06c: More USPTO Challenges

In this post, you’ll learn about USPTO challenges to refusing frivolous trademark applications for novelty goods, and steps they are taking to minimize faulty registrations.

6c USPTO Challenge: Industry-Specific Trademark Law

Questionable trademark applications are on the rise, as are faulty registrations. But fixing the problem is not as simple as saying, “common terms cannot be registered.”

If that were true, then Apple (computers), Banana (tires), Jaguar (cars), Orange (amplifiers), Wave (accounting services), Box (online storage services) and many other legitimate trademarks would not exist.

And, whether creatives like it or not, keywords such as Dog, De Nada (Spanish shirts), and Mashed Potatoes (Thanksgiving shirts) “fit” case law requirements for trademark registration, even for T-shirts.

Is it possible – or even likely – some marks of ordinary words will be misused to eliminate competition in certain niches (at least, on Amazon)? Yep.

Innocent until proven guilty before TTAB or in federal court, Y’all. So USPTO can’t and won’t deny an application based on the possibility of trademark overreach.

Sorry if that policy harms you, but the alternative is worse.

Finding Industry-Specific Evidence

What many don’t realize is that trademark law is industry-specific.

Meaning, a term can be a trademark “stamp” (symbol of ownership) in one class of goods or services, and a “sword” in another. And the examining attorney must provide industry-relevant facts to support a refusal.

It’s not a matter of suspicion. It’s a big fat hairy deal.

Pressure to acquit, remember? And industry-specific evidence to support a refusal can be hard to find.

So here’s a quick example:

There are legit registrations of “All Day Every Day” (or tiny variations thereof) for pants and shorts, legal services, and more. No problem. The problem arises when you put it on a shirt, especially with an additional word in front (mama; baseball; football; knitting).

But how would the examining attorney find evidence that “Mama All Day Every Day,” “Baseball All Day Every Day,” and so on are merely variations of a well-known phrase, and that oodles of similar variations exist?

This is one case where the Amazon search bar is of little use because customers aren’t searching for “All Day Every Day” shirts. They’re searching for “mom shirt,” “baseball shirt,” “football shirt,” “knitting shirt.”

Evidence Collection and Presentation is Time-Consuming

Finding relevant industry-specific evidence to support refusal of a frivolous trademark application can be a time-intensive process.

Examiners review applications for every industry you can imagine, from every country. They’re expected to deal with each one once, and make an initial decision within a week or so of the assignment. If they issue a refusal, they must explain why and provide objective evidence to support their decision.

Evidence for Refusal is a Big Deal

So imagine you’re the examiner, and you have a gazillion frivolous applications to review. Each refusal has to include evidence supporting your decision. If the applicant responds, your final refusal must contain all the evidence needed to prove your case before the Trademark Trial and Appeal Board.

Y’all. I spent an entire week gathering evidence for my first post-pub Letter of Protest. I knew what evidence was needed and how to find it. But stuff takes time:

  • collecting evidence
  • annotating it for evidence rules compliance
  • eliminating duplicate content
  • creating an index to describe each page and relevant details

All these things take time.

(By the way, the index doesn’t go to the examiner. But they go through a similar process to write a refusal, citing specific pages of evidence and the relevant fact(s) it proves.)

I have one word for all the examiners: Respect.

USPTO Efforts to Fight Faulty Registrations

Can I just say it? I love the USPTO.

When I think of Director Iancu, and former Commissioner Mary Denison, and new Commissioner David Gooder, and the Attorney Advisors I’ve spoken with, and even the examiners I’ve never known, I get teary-eyed.

I really do.

They are fighting so hard to fix this mess!

USPTO Directives to Reduce Faulty Registrations

Here are some of the things they’ve done:

  • Supplemental Training – USPTO created a supplemental training (in July, 2017) for Merely Informational Matter which they tried to incorporate into the latest version of TMEP. It’s no longer online, but I have a copy of the Examination Guide 2-17 Merely Informational Matter (at the bottom of that post)
  • TM Specimen Protests Pilot Program – in 2018 USPTO enabled third-party reporting of mock-up specimens (here’s an explanation of how the program helps USPTO fight fraud by Duets Blog)
  • Attorney Requirement – USPTO now requires new applications to be filed by attorneys
  • Random Audits – USPTO does random audits of registered trademarks. I stumbled across one of these from January 2018, and shared screenshots in my USPTO Audits post. The audit requires “proof of use of the registered mark for two additional goods per class.
  • Letter of Protest and Staff Availability – USPTO provides the Letter of Protest procedure so anyone, anywhere, can provide objective evidence relevant to the registrability of a mark, and their cheerful, patient, friendly staff will answer a protester’s questions with the greatest of professionalism, impartiality, and kindness
  • For an overview of these and many other changes, see this IP Watchdawg interview with Retired Commissioner for Trademarks Mary Boney Denison

Aren’t these folks the greatest? They sure are!

Results of USPTO’s Efforts

No doubt the supplemental training has been a huge factor in slowing down faulty registrations. Many if not most of the examples of faulty registrations I share in this series were registered prior to 2018.

Likewise, friends in the print-on-demand community have reported that Specimen Mock-up Protests stopped some frivolous/faulty registrations. It’s not a guarantee.

The attorney requirement should reduce the number of frivolous applications (by virtue of the added cost, if nothing else). It didn’t stop the application of I SURVIVED COVID-19 AND ALL I HAVE LEFT IS THIS LOUSY !#%&*! (SN 88894347) for T-shirts, but at least they’re trying!

The thought of random audits that require proof of use for two additional goods per class brings me nearly as much satisfaction as Schogetten chocolates. (#ad)

That’s not spam, I’m serious. (The chocolate is cheaper direct from Aldi’s. And if you don’t live near an Aldi’s, I’m so very sorry. I just am.)

The Letter of Protest has also proven to be the most valuable, impartial weapon yet in the fight against questionable trademarks. In Part 7a, I’ll share some of the positive results of the Letter of Protest procedure despite challenges protesters face.

This is Part 6c of a 12-part series about the threat and impact of questionable trademarks. The next post is Part 7a. Or see below for a complete list: