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 10a: The Halo Effect

This post examines how the Halo Effect leads to faulty registrations.

TTAB is paving the way for faulty trademark registrations. No, they’re widening a roadway that was paved in New York. How? The Halo Effect.

System Bias: The TTAB Non-Precedent Error

I’m not an attorney, nor do I play one on TV. Yet I hope to persuade you that TTAB is capable of mistakes, and that their recent mistake is going to cause a lot of harm. Because if I do, then maybe someone of influence can reach the powers that be at USPTO, TTAB, Congress, or wherever to help stop the madness.

The Halo Effect: How Questionable Registrations Lead to Faulty Registrations

The sad fact of trademark is, one questionable registration often leads to another. Stack enough of them together and anything goes.

How does this happen? Halo Effect bias.

The more registrations an Applicant gets, the easier it is to get the same phrase registered in another class.

This is a tactic used with great success in print on demand. What’s infinitely worse is that the Trademark Trial and Appeal Board recently looked to prior registrations to endorse otherwise-nonfunctioning marks. See In re The Random Acts of Kindness Foundation, Serial Nos. 87245967, 8745971, 87245973, and 87245975 (TTAB Feb. 15, 2019).

Moment of silence for the innocent businesses that will be slaughtered by others who use TTAB’s decision to press for questionable marks.

In their decision, the board noted

Applicant has eleven registrations which are either comprised of or incorporate the same wording at issue here, in either standard character or stylized format. Six of these registrations are over five years old, and the remaining five issued from applications filed on the same day as the four applications at issue in this appeal.

None of Applicant’s previously registered marks comprised in part of the phrase RANDOM ACTS OF KINDNESS include a disclaimer of the phrase. The Examining Attorney’s refusals thus constitute a departure from the Office’s prior position.

There is no evidence, or even argument, to suggest that the alleged incapability of this phrase to identify source could not have been discerned at the time any of the prior registrations were examined. The same types of evidence the Examining Attorney now relies on was previously available. Furthermore, the Office offers no reason for its inconsistent treatment of the five registrations which recently issued that were filed on the same day as the four applications before us. In light of these unusual circumstances, we are compelled to reverse the Examining Attorney’s refusals. To find otherwise would result in inconsistent examination.
Decision: The refusals to register Applicant’s marks are reversed.

TTAB Decision Reversing Refusal of Registrations for RANDOM ACTS OF KINDNESS

Before we get to Tammy TMEP, let’s take a look at the unusual circumstances. True, USPTO issued 5 registrations the same day four others were refused. But it’s not like they were all on the examining attorney’s desk at the same time.

Here’s an interesting view of the trademarks for this phrase (pay attention to the comments for status dates around July, 2017):

[Source: author’s 2020 Registered Marks Airtable, RAC Foundation Table]

In case the Airtable doesn’t display properly, here’s a bird’s eye view of what happened:

  • March 7 – two Failure to Function refusals are issued (SN 87245973, 87245975)
  • March 21 & 22 – five marks are approved (SN 87245950, 87245954, 87245953, 87245959, 87245962)
  • March 27 – two more refusals are issued (87245971, 87245967)
  • July 13 – two marks register (SN 85038961, 85038954 – both published in 2010)
  • July 16 – TTAB reverses the March refusals (SN 87245973, 87245975, 87245971, 87245967)
  • July 25 – the five marks that were approved in March are registered (SN 87245950, 87245954, 87245953, 87245959, 87245962)

The Trademark Trial and Appeal Board concludes:

There is no evidence, or even argument, to suggest that the alleged incapability of this phrase to identify source could not have been discerned at the time any of the prior registrations were examined… the Office offers no reason for its inconsistent treatment of the five registrations which… were filed on the same day as the four applications before us. In light of these unusual circumstances, we are compelled to reverse the Examining Attorney’s refusals. To find otherwise would result in inconsistent examination.

Source: TTAB

Okay, before we get to Tammy TMEP and why this TTAB decision is wrong, let me point out a couple of things in the examiner’s defense:

The “five registrations which… were filed on the same day as the four applications” (that the examiner refused) were not decided at the same time as the other four marks. The first two refusals were issued two weeks earlier, and the other two refusals were issued nearly a week later.

There’s no telling what happened in the interim. Even five days is a long time when you’re working under tight deadlines with unrealistic case loads.

My contact at USPTO, Joe, told me (back when I was with the TWD group), the caseload had increased so much at USPTO that Attorney Advisors were asked to help with examinations. It’s the first time he’s aware this has ever happened.

TTAB says “the Office offers no explanation for its inconsistent treatment. Well, lemme help Y’all out with some possible reasons:

  1. Trademark Law is Industry-specific
  2. Tammy TMEP’s Fuzzy Language
  3. Attorneys are Human Too

Secondly, as W. Edwards Deming famously said,

A bad system will beat a good person every time.

Consequently, Tammy TMEP has this to share…

Prior Registrations Have No Bearing On Other Registration Decisions

The examiner pointed out in his brief, prior registrations have no bearing on other registration decisions:

As is true with other refusals, it is well settled that each case must be decided on its own facts and the Trademark Trial and Appeal Board is not bound by prior decisions involving different records. See, e.g., In re Nett Designs, Inc., 236 F. 3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re Datapipe, Inc., 111 USPQ2d 1330, 1336 (TTAB 2014).

TTAB Appeal of RANDOM ACTS OF KINDNESS refusal, Examiner’s Brief

The board actually expanded on this text in their decision:

The Examining Attorney in turn relies on In re Nett Designs, Inc., 236 F. 3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) for the often-cited principle that each case must be decided on its own facts and that the Board is not bound by prior decisions involving different records. See also In re Cordua Rests., Inc., 118 USPQ2d at 1635 (“The PTO is required to examine all trademark applications for compliance with each and every eligibility requirement . . . even if the PTO earlier mistakenly registered a similar or identical mark suffering the same defect.”).

RANDOM ACTS OF KINDNESS, TTAB Decision, Page 15

Oh Wait! Prior Registrations DO Have Bearing On Other Decisions!

And then TTAB nixed this “oft-cited principle” (from CASE LAW Y’all!) by referencing “the following presumption under Trademark Act Section 7(b), 15 U.S.C. § 1057(b):

Certificate as prima facie evidence. A certificate of registration of a mark upon the principal register provided by this chapter shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the owner’s ownership of the mark, and of the owner’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate, subject to any conditions or limitations stated in the certificate.

TTAB Decision, Page 16

Well, I reckon they feel stuck. If I understand this paragraph, this means once a mark is on the principle register, they’re good to go. There’s no way to cancel the older marks. But it’s still a bad decision.