Trademark System Bias


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Trademark System Bias, Part 07a: Letter of Protest Implementation

In this post, you’ll learn how the Letter of Protest procedure helps avoid faulty registrations despite its legalese and limitations.

Somewhere along the way, USPTO instituted the Letter of Protest system. It’s a way for interested parties to submit objective evidence that an application might not be eligible for registration. It’s apparently been around for at least a few years, although most creatives only learned of it in 2018 through the efforts of Ken Reil, founder of the Trademark Watch Dawgs group.

The Letter of Protest is an imperfect, much-maligned, yet incredibly useful tool to promote quality registrations. Here are some of the early challenges protesters had to overcome to use it.

Letter of Protest: An Exciting Discovery

I apologize in advance for the following personal references, given only to provide a small business owner’s perspective on the Letter of Protest system.

My introduction to the Letter of Protest was a random Facebook post by Ken Reil. I didn’t know him – only, I attended a workshop he did at a conference six months earlier. The Facebook post intrigued me enough to start digging around, and I soon joined the Facebook group he started to fight questionable trademarks.

That same week, Ken and I (unbeknownst to each other) talked with USPTO Attorney Advisors about the growing problem of questionable trademarks and how to fight them using the free Letter of Protest system.

I learned from my conversation with “Joe” that USPTO welcomed protests from industry insiders because they provide objective evidence to help examining attorneys consider each application in light of industry-specific facts of which they may be unaware.

Easy for you to say!

Sorry. Legalese.

It gives us a way to help them spot questionable trademarks, Y’all.

There are no words to communicate the impact those first conversations with Joe had on me. His explanations of the Letter of Protest process inspired me to learn all I could so that creatives might be empowered to defend themselves from the growing cancer of questionable trademarks and trademark overreach.

The Letter of Protest form itself needs to be improved and some of the procedural rules are aggravating (more on that in Part 9). But it’s still the best thing since sliced bread.

Letter of Protest: Difficult to Implement

The Trademark Watch Dawgs Facebook group grew quickly, and several members began filing protests. Some of these early attempts were denied because strict impartiality rules prohibited USPTO staff from giving any specific advice or instruction in advance.

It was trial and error, all the way.

  • Call up the trademark office when a protest was denied to find out why it had failed.
  • Learn how to meet evidence requirements.
  • Learn how to vet applications to avoid moot protests (“moot”=don’t bother with this y’all)

So we learned. And we documented what we were learning. The group was converted to an “educational group” so that Educational Units could be created.

Members were learning

  • how to search USPTO’s databases for trademark applications on TESS
  • how to navigate TSDR to read applications, documents, and current status
  • how to identify the goods and services affected by the application
  • whether the application was new enough to file a protest
  • how to gather relevant and reasonable evidence affecting the registrability of a term
  • how to remove all personally-identifying information from evidence
  • what language to use for the legal basis of the protest
  • what to do if the first protest was accepted but no action was taken (wait and have a different individual file a post-publication protest; more on this later)
  • how to provide evidence a clear error was made (because some frivolous applications are discovered late in the process, and some pre-publication protests were disregarded)

We had a busy time, y’all!

Letter of Protest: Challenges Caused by the Form

Most of those early protest failures can be traced to an issue with the Letter of Protest form itself.

Take a look at “Legal Basis” section of the Letter of Protest form:

Letter of Protest Legal Basis

In case you’re over 40, here’s the list of options:

  • Mark is likely to cause confusion with an existing U.S. Trademark Registration…
  • Mark is generic.
  • Mark is merely descriptive or misdescriptive, or should have an element disclaimed on that basis.
  • Mark is primarily geographically descriptive or misdescriptive, or should have an element disclaimed on that basis.
  • Mark is involved in pending litigation…
  • Previously registered mark is being used inappropriately…
  • Other Legal Basis. Explanation of legal basis (and text box for explanation.)

Guess what? None of the form-defined options fit for 99% of print-on-demand protests. But wait, it gets worse.

The Letter of Protest Forms Used to Include a Moot Legal Basis

That screenshot above is the new form. The old form included a box to check for a “Merely Ornamental” refusal.

Our first protests asserted the “Merely Ornamental” legal basis. Sadly, “Merely Ornamental” is an inappropriate basis for protest. USPTO expects attorneys to consider that option on their own.

We didn’t know it, but the actual Legal Basis our evidence supported for those other protests was that each novelty phrase was merely a “Widely-Used Expression.”

But when we submitted “Widely-Used Expression” evidence with a “Merely Ornamental” legal basis, the protests were denied.

Nice.

If this was a math formula, it would look like this:

a + b = c, when

  • a = correct legal basis
  • b = reasonable and relevant evidence
  • c = protest accepted

Only, this math problem contained a huge problem for protesters…

Letter of Protest Forms Omit an Important Legal Basis

The most common reasons to protest a mark in the print-on-demand industry are “Failure to Function – Merely Informational Matter, see TMEP 1202.04” or “Failure to Function – Widely-Used Expression, see TMEP 1202.04(b).”

Notice that “Merely Informational Matter” and “Widely-Used Expression” are both missing from the Letter of Protest form.

This is like saying (in the formula above), “We’re not giving you ‘a’ – just do your best, use ‘w’ (wrong legal basis) instead.” Unfortunately,

w + b = 0 (Protest Denied)

Hmm. Let’s review what we learned in this series so far:

  • The print-on-demand industry is growing rapidly
  • Novelty producers can generate thousands of unique expressions to decorate their goods
  • Trademark trolls and bullies have been gaming the system for years
  • Clueless creatives and their not-always-industry-savvy attorneys are joining the game
  • Thus, there’s a good chance the number of ineligible trademark applications filed for expressions used to decorate novelty products is going to grow rapidly in the coming years
  • Letters of protest offer examiners easy access to objective, reasonable, and relevant industry-specific evidence affecting the registrability of ineligible applications

And the form USPTO offers industry insiders to protest these unregistrable applications doesn’t include the most likely legal basis for refusal?

“Merely Ornamental” is gone from the form now. Yay! But, would it have been so hard to add “Merely Informational or Widely Used Message”?

ALERT: Reading this section may have provoked you to feel sarcastic or irritable. Go hug somebody or text a nice note to a friend or family member. Do it now. We’re all doing the best we can.

Letter of Protest Victories Despite the Challenges

Well, I reckon someday that form will be updated. And, since USPTO’s Attorney Advisors were so helpful, we did eventually learn how to cite the correct legal basis, and what sort of evidence was required.

Over the course of many months, group members saw more and more victories. It was truly thrilling to see faulty registrations avoided, and widely-used expressions kept available for all. In Part 7c, I’ll share some of our biggest “wins.”

Please don’t misunderstand. When I think of the disappointed applicants, it makes my heart hurt.

Y’all, if you’ve never tried to build your own business, you cannot understand. It’s a lot, lot, lot of work.

The master has failed more times than the beginner has even tried.

Stephen McCranie

It breaks my heart to think of what ineligible trademark applications represent. Each one will become one of two things:

  • many will shatter the hopes of the applicant when they are refused
  • many will slaughter the products of competitors when they are registered in error

Sadly, those are the only two choices. It’s easy to understand why applicants don’t like protests or protesters.

Applicants are not the only ones unthrilled with the Letter of Protest process. Some attorneys seem bent on opposing it. In the next section, I’ll explore some possible reasons why.

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