This post links to an example Letter of Protest against a Bible verse trademark application, and explains why I filed it.
Oh this makes me so happy!
Last summer I submitted a Letter of Protest against the trademark application for “With God All Things Are Possible” (Serial Number 88331042). (See the redacted Letter of Protest here.)
Earlier this week I decided to find out what happened.
Why I Submitted a Letter of Protest
Every time I submit a Letter of Protest, I have One LOP Why.
Just like every other protest I’ve submitted, I have no skin in this game. No competing products. But I’ve seen the devastation that results when hundreds of business owners lose their products overnight.
The Legal Basis for My Letter of Protest
Bible verses and other quotes from religious texts are not eligible for trademark.
“With God all things are possible” is a direct quote from the Bible.
(Kinda sad it took a protest for the examiner to recognize this fact. Shame on us Christians for not having a greater impact on our culture.)
About Letter of Protest Deadlines
In my original post, I admitted I had low hopes of success.
This trademark application was published for opposition on July 2.
The trademark rules allow 30 days to file a post-publication Letter of Protest, making the deadline August 1. (“Thirty days, hath September…”)
If the evidence included with that Letter of Protest shows a clear error was made, the Commissioner of Trademarks will return the file to the original examining attorney and tell them to reverse their decision.
As I mentioned in my original post, I missed the 30-day deadline by about 12 hours.
And believe me, if you are one minute late on the deadline, your letter of protest will not be accepted.
Kudos to USPTO for Sticking to Deadlines
This is another reminder that the USPTO’s top priority is to issue quality registrations as quickly as possible. They don’t want applicants being jerked around needlessly. This is a good thing, and you’d be happy about it if it was your application on the line.
But I digress.
I Might Have Received a USPTO Response
I don’t think I’ve gotten a response from USPTO for this protest, which is a bit surprising. In the past they’ve sent a letter via snail mail to let me know the protest was accepted or rejected. If it was rejected, they gave the reason why. And yes, I’ve been rejected for tardiness.
To be fair, USPTO is transitioning to digital everything. It’s possible they sent an email to me. Since I nuked my inbox a few months ago in a fit of despair I’ll never know.
(Don’t judge me. I am working on a system to automagically manage my inbox. But that hadn’t occurred to me at the time.)
My Letter of Protest was submitted online on August 2, 2019. Let’s dig into the record and see what we can learn.
Link to the Trademark Application Documents
If you click on the TSDR Status tab for WITH GOD ALL THINGS ARE POSSIBLE you’ll see that it is “DEAD.”
So let’s click on the Documents tab and take a look at what happened.
This is where you’ll see a list of all documents related to this trademark application.
July 02 – OG Publication Confirmation
On July 2, 2019, this trademark application was officially “published” in the Trademark Official Gazette.
The “OG” is how USPTO complies with trademark law to notify interested parties that a trademark application is likely to be registered soon.
This is the day the USPTO said, ”Dearly beloved capitalists, we are gathered online today in the presence of God to witness the joining together of a unique expression or design and its rightful owner.
“If anyone can show just cause why this couple cannot lawfully be joined together in holy trademarkimony, let them speak within 30 days or forever hold their peace, unless they want to fork out thousands of dollars in legal fees to fight it out in front of the Trademark Trial and Appeal Board or in federal court.
July 08 – Administrative Response (Pre-pub Protest Accepted)
Somebody — not me — filed a pre-publication Letter of Protest. This “Administrative Response” is the USPTO internal memo saying the protest was accepted.
Only, the memo cites a legal basis which I have been told is inappropriate for Letters of Protest: “Potential refusal based on the absence of lawful use of the mark in commerce under Trademark Act Sec. 1, 2, and 45.” [Emphasis added.]
When I tried using “absence of use” on my 035 Letters of Protest, evidence pertaining to that legal basis was refused because “This legal basis is only appropriate for a proceeding before the Trademark Trial and Appeal Board” (or words to that effect).
The difference here is, the attached evidence supports a “Merely Informational” refusal based on this being a widely-used expression and being a Bible verse. More about this later.
I submitted my “Failure to Function – Religious Text See TMEP 1202.04(c)” protest just after the deadline, on August 2. I don’t think I received a response.
August 14 – Paper Correspondence Incoming
Now here’s something I haven’t seen before: “Paper Correspondence Incoming.”
This form from the examiner asks the Director of the USPTO to return jurisdiction to them “In accordance with the attached draft Office action.” In other words, “Please send the application back to me so I can send this refusal to the owner and fix my mistake.”
Returning jurisdiction is how USPTO makes sure the same person who approved the application will go on record as refusing it.
August 22 – Office Action Outgoing
Here’s the significant language on the Office Action Outgoing document of August 22:
“Registration is refused because the applied-for mark is a slogan or term that does not function as a trademark or service mark to indicate the source of applicant’s goods and/or services and to identify and distinguish them from others… In this case, the applied-for mark consists of a direct passage from a religious text…”
That’s the legalese way of saying, you can’t be trademarking the Bible, people.
Seriously, nobody’s gonna look at a Bible verse on your product and think it’s referring to your company.
It’s the Bible!
March 4, 2020 – Notice of Abandonment
This Notice of Abandonment is a standard USPTO form that documents the applicant’s failure to respond to the Office Action sent on August 22. In other words, the applicant did not fight the refusal.
Why the Pre-pub Protest Could Have Failed
Unfortunately, I’ve seen plenty of Letters of Protest citing “Merely Ornamental” as the legal basis, supported by “Merely Informational” evidence, denied. As in, the examiner never saw the evidence.
It’s possible and even likely the Attorney Advisor reviewing the protest didn’t even glance at the evidence. Why? Examiners are supposed to consider ornamental use on their own, so a protest with that as the legal basis is moot.
Likewise, I’ve seen many “Letter of Protest Accepted” memos that “tweaked” the proposed legal basis to a “parent” section of the TMEP and made it all but impossible for the examiner to recognize the relevancy of the evidence.
It’s aggravating to compile evidence only to have it disregarded (and possibly not even looked at) because the examiner is unfamiliar with a case cited only once, in a subsection of their manual. And if a swamped examiner only saw “absence of lawful use,” I wouldn’t blame them for thinking this is an issue best left to TTAB to decide. In which case, why waste time reviewing evidence?
Speculation Can Be Valuable
Granted, my reasons for filing a second protest were based on speculation (birthed from experience). I’m not saying examiners disregard evidence ever, including this case. Only that if they did, I can understand why they might.
Given similar scenarios that have played out in the past, such speculation seems worth considering.
Also, such a possibility doesn’t mean anybody is stupid. I’m only saying, it’s easy to get “locked in” on one legal basis and disregard all others. These folks are more swamped than a homeschool mom of six with three toddlers in cloth diapers. And they’re human. Mistakes are unavoidable.
Besides, intellectual property law is incredibly complex and often convoluted. Which leads to a system biased toward faulty registrations. See my Fight Frivolous Trademarks series for more details.
Err on the side of caution
When I submitted my letter of protest on August 2, I didn’t have time to download the other protest. I only knew the “absence of use” legal basis hadn’t been enough to stop five other questionable trademarks.
I also feared if the examiner only focused on the “absence of use” wording on the memo, they might delay reviewing the evidence because “This legal basis is only appropriate for a proceeding before the Trademark Trial and Appeal Board.”
And it didn’t appear the attorney had made any decision on the pre-publication protest in the two weeks since it had been accepted.
So out of an abundance of caution, I submitted a late post-pub Letter of Protest.
I don’t know if the examiner ever saw my protest. It’s the first time I’ve not gotten a protest response, even for a late one. And if they saw it, I don’t know if having a more specific legal basis helped speed up the process. I’m just glad they figured it out.
Why Examining Attorneys Make Mistakes
Lest you be tempted to rail on the poor attorney who changed their decision, let me remind you of something:
The Letter of Protest system exists because USPTO recognizes their dependence on industry insiders to share relevant facts so they can issue quality registrations.
If the industry insiders don’t provide those facts early in the process, that’s not the fault of the examining attorney!
Learning is Always a Good Thing
This seems like a perfect time to remind you of a quote by W. Edwards Deming.
I don’t recall where I heard it, but someone told the story of hearing Deming’s response to a critic. The naysayer accused him, “What you taught today is much different than what you said in your book.”
It might NOT be an exact quote, but this is what the storyteller gave as Deming’s curt response:
“I will never apologize for continuously learning.”W. Edwards Deming
So, yeah, let’s give examining attorneys permission to change their decision when they learn new facts.
Chalk up another win for free markets!