Trademark System Bias


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Trademark System Bias, Part 08d: Class 035 Protest Challenges

Learn how inconsistent evidence relevancy standards in Class 035 increase USPTO’s bias toward faulty trademark registration.

Loopholes in both TMEP and case law lead to many questionable or even faulty trademark registrations that harm the novelty industry. Often these registration decisions appear to disregard consumer perception. And challenges in the Letter of Protest procedures make it hard for industry insiders to share what they know. 

 Letter of Protest Procedure Challenges 

Before I explain the procedural challenges, let’s review an important fact. 

The Letter of Protest procedure exists as a way to present objective, relevant, and reasonable evidence that may affect the registrability of a term. It is not a “secret” way to “manipulate” examination outcomes. 

The procedural challenges that exist are arguably necessary to maintain the integrity of the examination process. In other words, they are the lesser of two evils. 

So I’m not saying they can or should be removed. I’m only pointing out that they appear to exist. This is my opinion, and is not intended to criticize. It bears repeating: USPTO’s bias toward faulty registration reflects systemic issues, not incompetency or lack of dedication on the part of USTPO staff. 

These challenges are a result of policies beyond the control of Attorney Advisors and Examining Attorneys. So don’t you dare use my words to bag on the dedicated and professional folks I’ve been privileged to interact with! 

Challenge #1: Relevancy Standards for Class 035 (Background)

Back in the day, it was easier for examiners to spot ineligible applications. As Ron Coleman points out

Pro Tip: “For T-shirts” is pretty much always, and virtually never not other than, a clue that the “trademark” in question is for garbagio goods and IS NOT BEING USED AS A TRADEMARK.

Ron Coleman, Failure to Whatever

But print-on-demand is removing that red flag rapidly. 

For one thing, physical goods decorated with slogans may include all manner of shirts, hats, socks, leggings, dresses, swimsuits, scarves, headbands, glassware, jewelry, stickers, books, shower curtains, neon signs, cutting boards, ad nauseam. (See the GIRLBOSS protest for examples.)

Further complicating matters, sellers are rapidly figuring out that if they use Amazon or a drop-shipper to fulfill orders the appropriate choice to describe their goods and services is Class 035 (online retail services).

And this development revealed the challenge of inconsistent relevancy standards. 

Class 035 Relevancy Standards (Example) 

Protest #1, against an application for Class 035, was refused for consideration due to irrelevant evidence (meaning, the examiner never saw it). Yet the examiner’s later refusal was supported by similar evidence. 

I called Joe on behalf of the protester and the Trademark Watch Dawgs group to try to understand this apparent discrepancy and to find out how to improve protests in this class. 

Joe explained protest evidence must be relevant to the class of goods for which registration is sought. So evidence of use for online retail services should include  similar store names and of marketing materials for stores that used the term.

He could not comment on why the examiner had used evidence from products. Their apparent difference of opinion over relevancy was not cause for interference by the examiner’s supervisor. (Makes sense. Such micromanagement would create worse problems.)

Class 035 – Testing the Relevancy Standard

To test my understanding, I filed five protests against Class 035 applications. (As the Lord would have it, an ambitious individual was seeking registration of five commonly-used novelty slogans just then.) 

The protests were accepted (by an Attorney Advisor who was not Joe) in part. (I posted the index of one Class 035 protest and noted which pages were accepted.)

Here’s the footnote to one of the acceptance letters (5/21/2019): 

“Evidence of widespread use of a term may support that a term cannot function as a mark under Trademark Act 1, 2 and 45; however, some of the submitted evidence does not show common usage or understanding of the term “BRIDE” being used by itself as an informational slogan. Such evidence will not be forwarded to the examining attorney.”

USPTO Protest Acceptance Letter Footnote

The footnote implies products using the term as a novelty slogan would have been accepted as evidence. Such evidence was and is easily available, but the experience with Protest #1 and my conversation with Joe led me to omit it.

These events reveal a troubling  inconsistency at USPTO:

Evidence of widespread use on novelty goods may be disregarded by some Attorney Advisors if the application is for Class 035 online retail services, yet expected by others. 

But there’s a second problem. The next post will highlight USPTO’s overly-strict Merely Informational Matter protest evidence relevancy standards.

This is Part 8d of a 12-part series about the threat and impact of questionable trademarks. The next post is Part 8e. Or see below for a complete list: