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.

Disclaimer: For the sake of illustration this series of posts refers to specific examples of questionable trademarks. Most of these were selected at random from a large database of similarly-questionable registrations and are not to be construed as criticism of the owners, their attorneys, or USPTO staff. All opinions are my own. More Legal

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On Fighting Frivolous Trademarks, Part 01a: Introduction

In this post, you’ll learn why a homeschool mom of six got involved in the fight against questionable trademarks, and why you should get involved, too.

Overview: Why I Fight Frivolous Trademarks

In February 2018, I began learning about flaws in our US Trademark system that make registration of frivolous (overreaching) trademarks commonplace among Amazon sellers and creatives. These trademarks restrict free markets and cause millions of dollars in lost sales in the process.

I’m the daughter of a bankruptcy attorney and a former legal secretary. Maybe that’s why my first week of trademark self-education made me forget to eat. It was easy to predict what was happening, long before I heard the stories that confirmed it:

  • Amazon’s FBA private label sellers losing warehoused products (confiscated and destroyed by Amazon due to overreaching IP infringement claims by trademark owners)
  • Graphic designers losing valuable T-shirts to trademark trolls and paying tens of thousands of dollars trying to regain rights to use expressions they had coined
  • Other business owners losing tens of thousands of dollars in revenue from just ONE faulty registration

These are true stories of real people like you and me, entrepreneurs who are working hard to make a better life for themselves and their families. When one begins to grasp how big the Amazon opportunity is, the risk to the US economy created by such faulty registrations is frightening.

How many questionable trademarks will it take before everything crashes?

My Trademark Self-Education

Since that time, it’s taken me hundreds of hours to learn the things I will share in this series of posts. Hours upon hours doing stuff that often seemed a little crazy-obsessive (even to me):

  • studying the USPTO’s Trademark Manual of Examining Procedures
  • multiple calls (dozens?) with USPTO staff, including an extremely helpful Attorney Advisor (I call him Joe to protect his privacy)
  • submitting “pre-pub” Letters of Protest (“LOPs”) against new trademark applications to register terms and phrases that are nothing more than T-shirt slogans or marketing keywords used in the print-on-demand industry
  • submitting “post-pub protests” against marks that were approved for registration and Published for Opposition (see Part 7c: Letter of Protest Results to see why this is a big deal)
  • studying a “rough draft” by law professor Dr. Alexandra J. Roberts and corresponding with her to share my print-on-demand perspective (which she generously included in her brilliant article for the Iowa Law Review, Trademark Failure to Function)
  • reading many other online articles and blog posts, including trademark attorney Ron Coleman’s incredibly insightful Failure to … WHATEVER
  • creating Letter of Protest training for other creatives to use
  • submitting feedback to USPTO on their Strategic Plan
  • writing then-Commissioner of Trademarks Mary Denison to inform her of some of the data collected over that year, and correctable system issues revealed by it (I received a gracious response and a contact for submitting specific ideas, but life happened and it didn’t go any further)

Many others likewise contributed untold hours to this fight, filing Letters of Protest and presenting their own viewpoints to the USPTO.

Why I Wrote This Series

It was gratifying to feel I was making a small difference. But the practice of applying for questionable trademarks is still widespread. Registration of these marks happens at an alarming rate. To turn the tide will take much more than fighting frivolous applications as they come up.

When I left the Trademark Watch Dawgs Facebook group in March 2019, I had every intention of rejoining the fight against questionable trademarks after my “mom book” was done. And no, it’s not done. So why all these posts now?

A few random circumstances led to this series of posts:

COVID-19 Drew Me Back

I noticed 3M was in the news a lot, using their trademark to sue producers of “counterfeit” N95 masks.

That’s a strange use of trademark. NIOSH is in charge of certifying masks. My curiosity got the best of me and opened up a can of worms too big to cover in this post. Along the way, I discovered someone else (not 3M) had applied to register “N95” and “N95 CERTIFIED” as trademarks for medical masks.

The audacity. As if one company should be the sole supplier of health masks that are required for healthcare workers on the front lines of a pandemic. 

(A 2006 article by EHS Today, Six Respirator Manufacturers Warn President of Shortage of Masks, reveals how frivolous lawsuits led to our current shortage of American suppliers.)

Anyway, the thought of somebody trying to get a trademark so they could control the supply to our country just burned me up. So I filed protests against them both.

It took less time than you will spend reading this post for me to provide USPTO’s examining attorney with objective, reasonable and relevant evidence these applications must be refused.

[Update 6/19/2020: USPTO accepted both protests. I learned my evidence for “N95 Certified” should have included “certified.” Not to worry, the Attorney Advisor noted, “another letter of protest presented evidence that may relate to that term in the mark and that will be made of record in the application.”]

Why bother? Because I know too many folks who have no clue what an N95 mask is, much less where to find evidence it fails to function as a trademark. And many conversations with USTPO staff have convinced me, the Letter of Protest procedure exists so outsiders can quickly and easily supply examiners with reasonable, relevant evidence to reduce time spent on ineligible applications.

By the time the examiner gets the application, all the news stories about shortages of N95 masks during a pandemic may be forgotten. But I won’t forget because my hubby uses N95 masks in his work on a regular basis.

Blogging Drew Me Back

I admit it. Abstract random with a heavy dose of squirrel. My brain is “all that and a bag of chips.” But when my book was nearly complete, I decided to tidy up my blog.

That’s how I came to write my update on a “post-post-pub” protest I filed last summer. In it, I pointed out that WITH GOD ALL THINGS ARE POSSIBLE is a Bible verse and thus unregistrable. Yet, as I explain in that post, the legal basis cited on a pre-publication protest left the refusal uncertain.

Seeing yet another ineligible application published for opposition reminded me, the battle is far from over. And thanks to a protest, another faulty registration was stopped.

USPTO’s Proposed Letter of Protest Fees Drew Me Back

Last but not least, I stumbled across an attorney letter in support of USPTO’s proposed Letter of Protest fees. That led to my discovery of USPTO’s solicitation of public comment last fall. Obviously, it’s too late for me to comment. But I’m hoping this series of posts can somehow influence USPTO’s final budget decision, because

  • The current system is strongly biased in favor of faulty registrations, particularly in the print-on-demand industry
  • The number of ineligible applications for trademark registrations in typical novelty classes is likely to increase dramatically in the next few years
  • USPTO’s attorney requirement will likely lead to a greater percentage of faulty registrations
  • Letters of Protest are a vital part of the solution, supporting examiner efficiency at no cost to USPTO
  • USPTO’s proposed Letter of Protest fees are short-sighted and misguided, throttling help they desperately need in order to avoid faulty registrations that hamper free markets

These are the main points I hope to prove in this series of posts.

Why Print-on-Demand Trademarks Matter

The way things stand now, first in line gets to register a novelty expression as a trademark. At least, if they can do so before the market is saturated.

We’re talking about words, partial phrases, and widely-used expressions (or clever variations spawned by such expressions) that are so commonplace and short they are unlikely to qualify for copyright protection.

Yet after only five years of “protecting” their “mark” owners can achieve incontestibility status for a virtual monopoly. It’s been that way since LIFE GUARD was registered in 1938. (“LIFE GUARD” was a relatively new term in 1938. And for over eight decades this generic, user-identifying term has been a cash cow for a licensing corporation. Friend, this is not the purpose of trademarks.)

Unless drastic measures are taken to increase awareness and improve education (among creatives, private attorneys, and at USPTO) a tsunami of frivolous applications is on the horizon. And without the insights provided by objective, relevant, and reasonable protest evidence, many will be granted. So, I decided to write this series of posts.

This is Part 1a of a 12-part series about the threat and impact of questionable trademarks. The next post is Part 1b. Or see below for a complete list: