Hey, class, let’s pretend we’re filing a Letter of Protest for a phrase that fails to function!
Relax, sweetie, this won’t hurt, I promise.
Let’s back up and talk about the Legal Basis for your Letter of Protest.
The Secret Legal Basis
When I first tried to file a Letter of Protest against a frivolous trademark application, the biggest challenge was that the “Legal Basis” for my protest did not (and still does not) appear on the Letter of Protest form.
One might think that the proper choice is “Merely Ornamental.” That’s what I concluded, after studying the Trademark Manual for Examining Procedures. Meaning, I looked up the TMEP sections related to every. single. choice on the form.
Moment of silence for USPTO’s examining attorneys who are required to do this All Day Every Day.
It was obvious to this layperson – WHO CAN READ, YA’LL – that none of the other choices available on the Letter of Protest form fit. So “Merely Ornamental” is the obvious choice, right?
But alas, I was wrong.
In fact, Joe explained, “Merely Ornamental” is something the USPTO expects the examining attorney to consider independently, so evidence submitted in support of a refusal based on ornamental use is disregarded.
Side note: This is truly a shame, because TMEP makes it clear that slogans on novelty products are generally not registerable as trademarks. Here’s a quote from TMEP 1202.03(f)(i) Slogans or Words Used on the Goods:
Slogans or phrases used on items such as t-shirts and sweatshirts, jewelry, and ceramic plates have been refused registration as ornamentation that purchasers will perceive as conveying a message rather than indicating the source of the goods.
- ‘I LOVE YOU’ [on] … jewelry…
- products with the phrase I ♥ DC…
- NO MORE RINOS! conveys a political slogan…
- BLACKER THE COLLEGE SWEETER THE KNOWLEDGE primarily ornamental slogan…
- SUMO… with stylized representations of sumo wrestlers on applicant’s T-shirts…
- YOU ARE SPECIAL TODAY for ceramic plates…
- ‘ASTRO GODS’ [on] shirts…
- DAMN I’M GOOD… on bracelets and used on hang tags affixed to the goods…
I didn’t ask Joe why, when it comes to the print-on-demand industry, the Letter of Protest form includes one option that doesn’t apply but doesn’t include the option that is most likely to apply.
He can’t change it. It’s just the way it is.
(Update: The Letter of Protest form no longer includes the Merely Ornamental legal basis choice. Yay.)
Legal Basis: Merely Information Matter – Failure to Function
So what does apply? “Merely Informational Matter – Failure to Function, see TMEP 1202.04.”
This Legal Basis has two scary-looking phrases that are easier to understand with pictures. Let’s tackle them in reverse order.
What is Failure to Function?
Well, class, the entire legal phrase is: “failure to function as a source indicator.”
Seriously. Who talks like this? Legal nerds, that’s who.
Hang tight, soon you’ll be speaking fluent legalese.
Failure to Function = It Don’t Work, Mama
The “failure to function” part of this is pretty easy. If something “fails to function” that means it doesn’t work.
With me so far? Great!
Hold that thought, and let’s tackle the “as a source indicator” part.
Source Indicator = Brand or Company
The “source indicator” is a little more technical. In layman’s terms, you might substitute the word “brand” or “company.” The courts have ruled that the “source” does not have to do the actual manufacturing of the goods.
In other words, the fancy purse you bought can legit be manufactured by a sweatshop in China and still bear the logo of an American brand. As long as the American brand is the one in control of the final product.
The Meaning and Importance of Brand
Here’s a key understanding about “brand” that you simply must, absolutely, 100% get:
People buy from brands they know, like, and trust. (Marketing expert Seth Godin’s succinct post, define: Brand, says all this better than I can. Well worth your time.)
If I buy that fancy purse from Brand X, it’s because…
- I “know” enough about them to believe they offer me good value for the money. They will give me something that is worth more to me than what I pay for it.
- I like the way Brand X’s products make me feel, I like what they stand for, I like how they do business. If they do operate a sweatshop in China – and if I care – I can buy a purse from Brand Y, who doesn’t, instead.
- I trust Brand X to oversee the production of their products (“goods and services” as the legalese-speakers like to say). I trust them to make things right if something doesn’t measure up to their past performance. I trust them to protect my identifying information when I use their payment systems.
Source Indicator (Brand) Examples
Here are some examples of terms and designs that DO function as source indicators, and the “source” they are indicative of:
Bugatti – makers of the car my son wants to buy for me someday when he becomes a sponsored athlete
Bugatti emblem – the stylized version of the brand name used to mark Bugatti products.
BMW – makers of certain vehicles that are seen regularly at Fashion Island in Newport Beach, California, but only rarely at Quail Springs Mall in Oklahoma City.
BMW logo – the symbol used to mark BMW vehicles.
Hummer – a brand of trucks and SUVs, first marketed in 1992 when AM General began selling a civilian version of the M998 Humvee (per Wikipedia).
Hummer wordmark – a stylized version of the brand name used to mark Hummer products.
Are you beginning to see a pattern yet? Lets keep going…
Nike – the company that produces and sells things for elite athletes and those who wish they were
Nike swoosh – the symbol used to mark every Nike product, which looks even cooler than the word “Nike”
Under Armour – another company that produces and sells things for elite athletes and those who wish they were; also, the trademark bully that ruthlessly attempts to crush any business foolish enough to include a variation of the word “armor” in their brand name: Armor and Glory (Christian clothing brand); Body Armor (sports drink); Cascade Armory (Oregon-based outdoorsy brand).
UA Logo – the interlocking capital U and capital A marking every Under Armour product
Real Life Example of How Most Print on Demand Trademarks that Fail to Function Get Registered
Here’s an example of a phrase that should be considered merely informational. Yet, in most cases at USPTO, an application to register this phrase as a trademark – under the right conditions – would be granted. (Don’t believe me? I’ll post examples on a different post. Gimme time, people, gimme time!)
If this “Womens Grandma Definition Shirt Funny Gift for Grandmother” (#ad) shirt was submitted as the specimen for a trademark application, it would most likely be refused as “merely ornamental.”
Thank you, examining attorneys!
But if – as OFTEN happens – the specimen were instead a tag with the phrase printed on it, it would most likely be approved. Especially if the specimen tag is attached to a blank T-shirt.
And it’s not the fault of the examining attorneys.
It’s the fault of the disconnect between the Lanham Act and the USPTO examination framework that the courts and TMEP have created.
This isn’t necessarily a widely-used expression. And it doesn’t convey information about the T-shirt itself.
Besides, I coined it. So it’s my trademark, right?
That “Womens Grandma Definition Shirt Funny Gift for Grandmother” (#ad) shirt was my first seriously-profitable T-shirt design.
It’s been copied ad nauseum until my income from it dropped from multiple thousands in royalties during Q4 to, oh, around $10 a month now.
[Update 2020: I saw a legit spinoff of my “coined” expression at Walmart! Thanks, I’m honored that someone noticed my work! Imitation is the sincerest form of flattery after all.]
A savvy trademark attorney might have told me to register “GRANDMA DEFINITION” as a trademark to “protect” my brand. But a clear conscience is worth more to me.
Besides, that shirt always gave me a little angst. I know how frustrated some moms get when “Grandma” spoils the kids and leaves Mom to undo all the damage!
So, buy the shirt, don’t buy the shirt. My hopes for financial success lie in creating a sustainable business, not a winning T-shirt design.
I include it here so you’ll see, I really do understand why creatives want to trademark their novelty slogans. It’s disappointing to have no way to protect a winning text-based design from copycats.
I get it. I feel your pain.
But cluttering up the trademark registry is not the answer. Because questionable trademarks create many more problems than they solve. I hope you’ll hang around long enough to let me try to convince you this is true.