[UPDATE 4/9/19: each of the applications mentioned below was refused before my Letter of Protests were reviewed, so these will all be moot. Sigh. Another challenge with discovering what evidence is admissible in these cases. I did, however, learn that evidence of premature use is not appropriate for a Letter of Protest.]
I’ve filed four Letters of Protest against frivolous trademark applications in Class 035 (online retail sales) in the past week. This is uncharted territory for me, as my past LOP successes have all been in typical Print-on-Demand categories like T-shirts. After a Crazy Cat Lady LOP (filed by a friend) was rejected, I asked Joe why. He explained the evidence must match the category of goods or services. Since T-shirts aren’t the same as online retail stores, that evidence of widespread use is moot (legalese for “irrelevant”) — at least as far as he’s concerned.
It’s important to note (and Joe emphasized this), every attorney advisor is entitled to their opinion, and it’s sort of a gray area as the courts and TTAB have not specifically addressed the issue of evidence of widespread use in a related industry. Even though Merch by Amazon or Etsy sellers are providing online retail services (by making products available to consumers that are created after the purchase), the acceptable evidence should “look like” an online store or marketing materials for it.
(Side note: Basically, we are blessed that the examining attorney chose to refuse the “Crazy Cat Lady” IC 035 application due to its failure to function as a trademark. They based their decision on
As the Lord would have it, within a day or so of my conversation with Joe, my friend Rhonda shared with me FOUR new frivolous applications in IC 035 (online retail services) I could use to test out my understanding of Joe’s explanations. This is one of those four.
Download or view the PDFs I submitted below. Check out the incredibly boring videos on my YouTube channel for the reasoning behind each piece. In a perfect world I would create an engaging script to make it less painful. Listen to them at faster speed to survive. (The first of five videos is embedded below. I’ll have to add the rest later. Click here to go directly to the playlist.)
Click to view or download:
DuckDuckGo Search Results (USPTO has accepted search results in other protests, but didn’t here)
Google AdWords Report (USPTO has accepted this in other protests, but didn’t here)
Mama Bear Etsy Shops (first page of search results)
Mama Bear Facebook Shops
Mama Bear Novelty Products (the application lists online retail store selling wood signs, stickers/decals, hoodies, leggings, so those are the types of goods I tried to provide)
Mama Bear Definitions
Mama Bear Similar Applications (showing the owner’s apparent goal to monopolize similarly popular keywords to market online retail stores) (Note: USPTO did not accept this)
Mama Bear evidence of Premature Use (Note: USPTO’s response stated that this issue is not appropriate for a Letter of Protest)