When filing a Letter of Protest against a trademark application to register a Bible verse or other religious quotation as a trademark, here’s what you need to know:
- Legal Basis: “Failure to Function – Religious Text, See TMEP 1202.04(c)”
- Evidence: It’s not enough to tell USPTO the verse reference. They need to SEE proof that the verse is in the Bible, Koran, or whatever. For WITH GOD ALL THINGS ARE POSSIBLE, I submitted the Google Search results (because the first one listed put the phrase in bold print as part of the first result, and showed the verse reference), and a page from BibleGateway showing the entire verse in context. (NOTE: I printed PDFs using Fireshot, in incognito mode. If you forget to use incognito, you should edit the file before uploading and remove any personally-identifying information. Also, be sure the PDF includes the URL & date of capture. Fireshot adds this automagically.)
- More Evidence: Just for good measure, I included the Google Shopping results (splitting them into part 1 and part 2 to keep the PDF file size under 30 MB per USPTO’s requirements).
- NOTE: If the Legal Basis was “Widely Used Message, TMEP 1202.04(b)” as in Dave Cadoff’s excellent example on Merch Informer, this evidence would be inadequate for a post-publication Letter of Protest. I only included it to offer evidence of use in commerce. (Dave’s method works well early in the process, which is where anyone fighting questionable trademarks should concentrate their efforts.)
- Description of Evidence: 1) Google search results, showing the term is an excerpt from Matthew 19:26, NIV Bible; 2) BibleGateway results, showing full text of verse; 3) Google Shopping results, showing the phrase used on a wide variety of goods (signs, jewelry, pillows, journal, pocket tokens, wall art, decal) from a wide variety of platforms (including Amazon, Etsy, Christian Book Distributors, Kohls, Poshmark (Nordstrom bracelet), Gifts Catholic, and more).
- Need an example of how to complete the Legal Basis and evidence descriptions? See this redacted USPTO receipt of my Sample Letter of Protest for a Bible verse.
- To see an earlier protest filed by someone else that was accepted despite its faulty legal basis, see the Administrative Response in the tsdr records here.
Will It Work?
Sadly, this one may fail, as the deadline for opposing was yesterday (30 days after the application is published for opposition).
I filed this anyway because I only checked on it this morning, and since it is a simple, CLEAR ERROR on USPTO’s part, I’m hoping they’ll accept it past the deadline. (It took longer to write this blog post than it did to prepare and file the LOP.) There’s another protest pending, but the legal basis “absence of lawful use of the mark in commerce” is a legal basis that was rejected as inappropriate for the protests I filed in Class 035. The failure to function based on it being religious text is cut-and-dried, but who knows if anyone at USPTO will see my protest. We’ll just have to wait.
[Update 5/7/2020: Thankfully, this application was refused. My protest doesn’t appear in the public record, but the basis for refusal was changed from “absence of lawful use of the mark in commerce” (on the protest that was accepted) to “Failure to Function… direct passage from a religious text…” (same as my protest). See this post.]