Trademark System Bias


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Trademark System Bias, Part 09a: AFFIRMATIONS Case Study

Case Study: the AFFIRMATIONS Letter of Protest exposes inconsistent language in the trademark manual that creates needless hurdles to protests and increases USPTO’s bias toward faulty trademark registrations.

Here’s a trademark Letter of Protest example that illustrates some of the challenges examining attorneys face in issuing valid trademarks.

Yes, as I said in Part 8, many decisions appear to be made with disregard for consumer perception. And overly-strict Letter of Protest rules make it hard for industry insiders to share what they know.

But it’s not just that protesters can’t include any “arguments.” It’s that the form itself and the TMEP rules make it so difficult to get a protest accepted in the first place.

Keyword Case Study: AFFIRMATIONS

AFFIRMATIONS (SN 87859333) is an example of a marketing keyword in the print-on-demand industry. The examining attorney issued a two-fold refusal: Generic and Informational. But not until two pre-publication protests and one post-publication protest were filed and accepted.

[Note: A member from Trademark Watch Dawgs filed a pre-pub protest. The examining attorney reviewed it and took no further action. So a TWD member prepared a post-publication protest to be filed later. Meanwhile, an unknown protester also filed a pre-publication protest (this only came to light long six weeks after publication). It’s extremely unusual to see three protests filed against the same application.]

Whoa!

Does it bother you that a generic term was nearly registered?

It should!

Imagine thousands of small businesses being suddenly required to remove this extremely valuable descriptive term from their marketing.

  • Google ads
  • Facebook ads
  • Product titles
  • Product descriptions
  • Backend keywords

Ouch.

Happily, USPTO accepted a post-publication Letter of Protest. And Sara had to send a memo that made an examining attorney feel bad (I wish it weren’t so!). Here’s the first page of the memo:

USPTO Memo advising the examining attorney a post-publication Letter of Protest was accepted for “AFFIRMATIONS”

After reviewing the evidence (and the Commissioner’s assessment that approval of this mark was a clear error), the examining attorney issued a “Generic” and “Informational” refusal. Here’s the first part of it:

Affirmations Refusal

One might wonder how a mark that was refused for being generic came so close to being registered.

Y’all, it’s easy. And it’s not as cut-and-dried as it might seem in hindsight.

  • Even though competitors following best practices for protecting their Amazon or Etsy accounts WILL be harmed by a keyword-rich registration
  • even though they MAY be harassed by the owner

As long as all the i’s are dotted and t’s are crossed, a keyword-rich trademark registration is likely to issue. And this isn’t the fault of the examining attorney.

In the case of AFFIRMATIONS, I suspect the examiner spent a lot of time considering different sides of this possible registration. It took over seven months before a post-publication protest was accepted. Why? Delays and efficiency.

The mark was published for opposition on August 28, 2018. A pre-publication protest was sent to the examiner nearly six weeks later, on October 10, 2018. For the record, this sort of delay is extremely unusual. Most of the pre-publication protests I’ve seen reviewed post-publication were sent to the examiner a week or two after the publication date.

The post-publication protest was submitted on September 27. It was the last day possible to submit a protest. But that protest wasn’t accepted until after the examiner reviewed the pre-publication protest (the one from October 10).

Why didn’t USPTO review the post-publication protest immediately? Because if the examiner chose to refuse the application based on the pre-publication protest, the post-publication protest would be moot. USPTO is all about efficiency, Y’all.

In another extremely unusual circumstance, it was months before the examiner for AFFIRMATIONS made a decision on the pre-publication protest.

Lest you assume that examiner is incompetent, keep reading.

Remember, if the glove doesn’t fit, they’ve got to acquit.

And sometimes the glove doesn’t exactly fit TMEP’s “refusal rules.” Sometimes the Letter of Protest form isn’t a lot of help, either.

Case Law and TMEP Challenges

If I could talk to the examining attorney who had to admit clear error in approving AFFIRMATIONS, I’d shake their hand. I’d tell them I appreciate their work, and their willingness to learn. Because I understand how the fuzzy language in TMEP and silence in case law can lead to such a mistake.

Remember those nine novelty examples in the TMEP I listed in Part 6a? They’re almost all slogans or expressions of enthusiasm. Here they are again:

  • I ♥ DC for bags, clothing, plush toys
  • ONCE A MARINE, ALWAYS A MARINE for clothing
  • I LOVE YOU for bracelets
  • NO MORE RINOS! for bumper stickers, signs, and t-shirts
  • CLOTHING FACTS for clothing (designed to look like a nutritional facts label)
  • BLACKER THE COLLEGE SWEETER THE KNOWLEDGE (for shirts?)
  • SUMO (with stylized representations of sumo wrestlers) on T-shirts and baseball-style caps
  • YOU ARE SPECIAL TODAY for ceramic plates
  • DAMN I’M GOOD on bracelets and on hangtags affixed to the goods
  • MOUNTAIN CAMPER (for outdoor equipment and apparel)
  • OUTDOOR PRODUCTS (for a class of goods worn and used by persons engaged in outdoor activities)

None of these bear any resemblance to AFFIRMATIONS. If I didn’t know something about Amazon and Etsy, I might have missed the marketing significance of the term. And yes, I’m really, really tired of all the rude comments I see that blame “inadequate training of examining attorneys” for all the frivolous registrations.

As if USPTO is to blame. As if the attorneys are a bunch of numbskulls.

Lemme say it loud and clear:

TMEP and case law are extremely fickle, sticky, and fuzzy when it comes to print-on-demand.

One minute Tammy TMEP says “informational messages” are expressions of enthusiasm, another minute she says they are pointing out information about the product materials. What about terms that do neither?

Letter of Protest Form Challenges

It’s a good thing AFFIRMATIONS wasn’t our first protest. No doubt it would have failed.

Most of the 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

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

This 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.

Great, except “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 correct Legal Basis 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.

Letter of Protest Forms Omit an Important Legal Basis

The most common reasons to protest a mark in the print-on-demand industry are “Merely Informational” and “Widely Used Expression.”

(According to Tammy TMEP’s Section 1202.04 Informational Matter the official refusal language is supposed to be “SECTIONS 1, 2, AND 45 REFUSAL – FAILURE TO FUNCTION AS A MARK” but often the “merely informational” or “widely used expression” terms are listed instead.)

None of these options exist on the Letter of Protest form.

Am I the only one who thinks this is a little bit nuts?

USPTO is inundated with ineligible applications by

  • trademark trolls with savvy attorneys, plus
  • clueless creatives and their not-always-industry-savvy attorneys

No doubt the number of applications is growing rapidly.

And the form USPTO offers industry insiders to protest these unregistrable applications doesn’t include the most likely reason 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”?

Affirmations: Legal Basis Gymnastics

When it comes to the legal basis for the AFFIRMATIONS protest, it’s clear how the examiner may have felt they had to approve it. Let’s talk it through.

Affirmations: Not Exactly Merely Informational

By the time the AFFIRMATIONS protest was being prepared, the creatives I worked with (Trademark Watch Dawgs) had learned to use “Failure to Function – Informational Matter” as the legal basis for protests in print-on-demand. As I mentioned in Part 8d, the Legal Basis for the pre-publication protest of AFFIRMATIONS (SN 87859333) was

Mark is generic. Mark is merely descriptive or misdescriptive, or should have an element disclaimed on that basis. Mark is informational under TMEP 1202.04 and fails to function as a trademark.

But the memo forwarding the protest evidence to the examiner cited this reason: 

Possible genericness/descriptiveness/misdescriptiveness

Why was the “informational” basis removed? Many phone calls with Joe had clarified the evidence requirements and the likely interpretation of Tammy TMEP’s “Merely Informational” section.

Previous protests, including this one and others, had proven if the exact expression did not adorn the products, the post-publication protest based on the “merely informational” aspect would be refused. (I explain why this relevancy standard is wrong in Part 8d).

AFFIRMATIONS is a term that NEVER adorns products. So, by the current protest rules, “merely informational” evidence doesn’t exist.

It’s only used in a marketing context, to describe the type of messages available on products.

So that’s a “Descriptive” Legal Basis, right?

Affirmations: Not Exactly Descriptive

Not so fast.

According to multiple conversations with USPTO attorneys, “descriptive” terms are generally accepted to mean those that might be used to describe the materials that products are made of. Words like “soft,” “shiny,” “warm,” and so on.

In other words, NEITHER Legal Basis clearly “fit” the evidence, based on the Legal Basis definitions we’d been given and how we were allowed to rely on them for protests. (Again, examiners have a little more discretion than protesters.)

Tammy TMEP just wasn’t being much help.

In the end, we opted to list several relevant subsections of TMEP 1209 (Descriptive) in the “Legal Basis” box on the form, and pray someone with common sense would review the protest. They did, and the protest was accepted. Now, here’s where things get interesting…

The examiner’s final refusal rightly includes the Merely Informational legal basis, even though the post-publication protest did not include it. 

Why the change? Because the protest evidence shows scores of product pages in which sellers included “affirmations” in the product title and/or description. In other words, this descriptive word is also a widely-used marketing term.

The application was refused on two counts: “merely informational” and “generic.”

Hooray for creative freedom! Hundreds (or thousands?) of creatives are allowed to continue marketing their goods with this widely-used and very valuable keyword.

But let’s offer a moment of sympathy for the examiner who got understandably tangled up in Tammy TMEP’s linguistic gymnastics. And another moment of sympathy for the applicant who chose a brilliantly-descriptive term for her products.

Y’all, picking a name is the worst. There are just so many things to consider. Number of characters. Mood. Sound. Spelling. Message. Adding distinctiveness to all that can be a real pain in the neck.

Oops. Digressin again.

By the way, I know the person who gathered the evidence for this protest. (No, it wasn’t me.)

It took many, many hours (maybe weeks).

Finding proper evidence was a difficult project because it required knowledge of the industry PLUS knowledge of evidence requirements PLUS an understanding of which Legal Basis would be used. (Remember, when we chose the wrong legal basis for previous protests, the evidence was discarded.) Creating an index of evidence to highlight the marketing use of this term was likewise a time-intensive project.

(Psst! I wonder how many hours USPTO’s attorneys are allowed for evidence-gathering?)

Without the knowledge gained from many previous protests, this one would have likely failed.

Hopefully, this little story will illuminate some of the challenges USPTO’s examining attorneys face. The pressure is on them to say yes when they can, as quickly as they can. And some terms don’t fit neatly into TMEP’s box. It goes back to limited case law, and some pretty fuzzy language.

Silly Rules: Mama Bear and More

There’s another oft-unnecessary rule at USPTO: no cross-referencing.

Examining attorneys are expected to judge each application on its own merit.

Agreed. Wonderful.

Out of an over-abundance of caution to guarantee impartiality, attorneys are not to consider prior refusals for the same mark.

Likewise, protesters cannot say, “This term already failed to function for T-shirts. Don’t you think it fails to function for tote bags, too?”

I get it, honestly, I do. We all want the examiners to do their due diligence, and not be swayed by an argument given in the refusal of some other application. For one thing, a term that is so widely used in 2020 that it fails to function as a source indicator, may not be so popular five years later.

Okay.

Here’s the thing, though.

There are some terms that will always fail to function for novelty goods (T-shirts, glassware, journals, stickers, etc.) no matter what year it is. Unfortunately, some of them are already registered trademarks. Others keep turning up, like a bad penny.

  • eggspecting / Egg Specting / Egg-Specting (pregnancy puns never die Y’all) – two of these were published for opposition, the third was suspended pending the outcome of the other marks due to “Likelihood of Confusion” (I am not making this up! See SNs 86924316, 87030334, 87159196)
  • Mama Bear [SNs 86923714 (shirts), 87058048 (shirts), 86901959 (shirts), 88011770 (totes)] – Y’all, this fails to function for shirts, totes, socks and the rest of it. And it always will. Goldilocks isn’t leaving our culture anytime soon. Nor will the propensity for new parents to identify with the “mama bear instinct“. But until USPTO has a way to mark it “Zero chances for novelty products,” business owners have to continue monitoring and protesting this term that should be a “No-brainer No.”
  • Best Mom Ever – this was refused once, but there’s no guarantee it will be refused in the future. And, all of USPTO’s efforts to raise awareness and extra training notwithstanding, I’ve seen too many “TMEP wiggle room” approvals to take it for granted an application will be refused, no matter how obvious.
  • Someone in Boston Loves me!! (SN 86389859) – and in California (86389891)! And Colorado (86389887)! And Florida (86389882)! And New York (86389877)! And Texas (86879292)! Puh-leaze. These do not indicate source. Why can’t there be a way for the attorney to create a “blanket refusal” and have the system trigger it if an application fits the formula?
  • Jesus Loves You (SN 86260523) – yes, He does, and He doesn’t like that message being restricted to ONE person as if they are the source of it, people! Seriously! Check out the first specimen for JESUS LOVES YOU and then explain to me how it managed to get registered as a trademark? I’ll tell you how. With a second specimen for JESUS LOVES YOU, featuring a tag. The examining attorney’s initial refusal explained how to overcome the Merely Ornamental part of it. The refusal was also based on the likelihood of confusion with SN 3686884 (JESUS LOVES YOU TOO – for clothing), which was later canceled. Not because it failed to function as a source indicator. Only because the owner had stopped producing goods using the “mark.”
  • Sa____ole and all the variations thereof. Sorry, I refuse to print the full word here. The first application (SN 86832731) was registered for “Clothing, namely, tops.” Next, a stylized version was registered as a design mark (SN 87079752). The next application (SN 87734197) expanded the clothing class to include dozens of garment types. Finally, perhaps in response to heightened awareness due to Letters of Protest in general, the examiner of the next application (SN 87893569) issued a refusal because, sadly, this term is widely used alone and in longer novelty slogans and as a user-identifier. The applicant overcame the refusal with evidence that included: “1. Corporate registration with the State of Florida. 2. Scanned copy of the Trademark Certificate issued for the Word Mark ‘SA____LE’. 3. Correspondence with an individual from Etsy who was sent a Cease and Desist [after] IP theft of my Trademark.” Another mark that includes the term as part of a longer phrase (SN 87903048) was refused. Application to use a hashtag version (SN 87918962) was denied, but only on the basis of an inadequate specimen. The other application (SN 87918354) has been published for opposition and will probably register. Proving once again that, given enough time and money, trademark registration is an effective method to create distinctiveness where none exists, thereby creating a virtual monopoly regardless of the original consumer perception. Bro, do you even buy T-shirts?

This is only the tip of the iceberg. And please don’t take this personally. I love y’all, I really do.

It just makes ZERO sense to me that examining attorneys should have to waste one minute of time reviewing an application that most consumers would perceive as a novelty slogan, not a brand.

And it makes less sense that any one person or company should have a monopoly on these types of words and phrases without proving some level of acquired distinctiveness. (As in, Nike ran ads galore – for twenty five years – until they became known for “Just Do It.” That’s an example of acquired distinctiveness.)

Instead, distinctiveness is artificially created via a simple system:

  • Find or coin a lucrative novelty slogan (self-identifying terms like “Funcle” and “Awesome Dad” are GOLD, people!)
  • Register it as an LLC or corporation in your state
  • Get a drawing mark or a trademark listed on the supplemental register in any class
  • Upload your design to Amazon on T-shirts, sweatshirts, pop-sockets
  • Expand your line via drop-shippers like Printful or Printify (you do have an Etsy shop, right?)
  • Enforce your “mark” with cease and desist letters to anyone using any variation of it in any way
  • Add as many product classes as you can, as quickly as you can

Voila! You are now the proud owner of a virtual monopoly.

End of rant. Sort of. In Part 10 we’ll tackle the biggest issue of all: System Bias Caused by The Halo Effect.

This is Part 9a of a 12-part series about the threat and impact of questionable trademarks. The next post is Part 10. Or see below for a complete list: