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

When relevant, posts are sponsored or contain affiliate links. Read More

On Fighting Frivolous Trademarks, Part 08a: Specimens Loophole

In this post, you’ll learn how specimen loopholes are exploited to register questionable trademarks.

USPTO’s Letter of Protest procedure has helped slow down some faulty registrations. But there are problems with the current system that bias everything toward faulty registrations.

In Part 6 of this series, I tried to point out some of the fuzzy language from Lord Case Law and Tammy TMEP that leaves examiners confused and forced to issue faulty registrations. We’ll dive a little deeper into that in another post. But first, let’s talk about loopholes.

The three biggest trademark registration loopholes are:

  • inadequate specimen requirements
  • Intent to use rules and protest hurdles
  • incomplete phrases

We’ve talked about overcoming ornamental refusals in Part 5b. USPTO’s inadequate specimen requirements give applicants a huge loophole to slip through on their way to faulty trademark registration. And even though they recently announced plans to tighten up USPTO’s trademark specimen requirements, more changes are needed. Let’s take a closer look.

Loophole 1: Inadequate Specimen Requirements

Need a specimen? No problem! Use any of these methods to “prove proper trademark use”:

  • Lay a custom hang tag on top of a blank T-shirt, tuck the end inside the collar, and take a picture of the top corner of the garment.
  • Get your brand imprinted inside the collar of a blank T-shirt. Or have your local printer produce a specimen with the mark in small print over the breast pocket area. Costs around $5-10, I’m told.
  • Use a plastic doohickey-thingamajig to actually attach your hang tag to the garment’s collar tag. This creates a solid “online boutique” look.
  • Take a picture of your fancy hang tag with some nice twine. No product necessary.
  • Put your folded shirt inside a clear bag and slap a big label on top so the contents of the bag are mostly covered. Print your “trademark” on the label.
  • Print your mark on the product packaging (Keep Calm and Drink Beer socks)
  • Print your “trademark” on a business card and a banner (Keep Calm and Go Green). That totally changes consumer perception, right?
  • Spare no expense. Spend ten bucks on a domain name using the term (“mynewtrademark.com”). Add it to your shared hosting account with SiteGround. Include the domain name on your “marketing materials” aka product label. BOOM! Proper trademark use!
  • Get the fancy scissors from the arts and crafts department at WalMart and cut the edges of the tag. Nothing says “registrable” like adding that personal touch.
  • Limit your trademark application phrase to a word or two less than what’s on the shirt, and display the shorter phrase on a tag attached to the product (KEEP CALM AND LOVE for Keep Calm and Love Bison shirts) – this tactic is incredibly successful, see Part 8c

I apologize. I know sarcasm doesn’t look good on me.

Maybe you wonder how come I’m smart or savvy enough to come up with so many great ideas.

News flash: I’m not. And I didn’t.

But these tactics are used so often, and with such great success, it’s almost enough to make a grown woman throw a hissy fit. At least, if she loves freedom.

In Part 5e I shared a list of 19 trademark applications spawned by the “Keep Calm and Carry On” posters of World War II. Two were canceled under Section 8. I’ll bet you’d like to see the specimens for those other 17 source indicators, wouldn’t you? Hang on.

Overcoming Refusals: Hangtags, Small Print, and Partial Phrase Strategies

Here are some more examples of registered marks that used the Tag (“proper trademark use”) Strategy. Notice how many of them combine the Tag Strategy with the Partial Phrase strategy (see Part 8c). Others combine the Tag Strategy with the Small Print Over the Breast Pocket Strategy.

Many don’t show the full garment (or in the case of hats, the exterior). One specimen consists of an embroidery order for hats. Some register a domain name of the term and include it on the specimen’s tag or label. (By the time the term is registered, these domains have often expired.)

Not sayin’ they’re not real brands. Just sayin, if the average consumer read most of these messages displayed large on a shirt (especially if the statement was completed logically), would they think it was a brand? You be the judge. (Scroll on this embedded Airtable to view all records. Click on any single record to see the entire card including full trademark term and specimen.)

(Source: Author’s private Registered Marks Airtable, Hangtag view.)

Disclaimer: I’ve said it before, I’ll say it again: I’m not picking on anybody, calling these owners bad names or anything else. And I’m reasonably certain USPTO’s passion for fairness prohibits anything but random audits of current registrations, so please don’t panic if you happen to own one of the marks highlighted anywhere in this series. My goal is education to support trademark reform for the benefit of all and to inspire business owners to play nicely with each other.

In case the Airtable doesn’t display, here’s a list of these marks that are registered for T-shirts, hats, and in one case socks (36 of the 57 applications were prepared by attorneys):

  • 86557122 ASK ME ABOUT MY… (4831612, USA attorney)
  • 86331641 BE NICE TO ME MY WIFE IS PREGNANT (4746598, USA attorney)
  • 86336299 BORN TO FISH FORCED TO WORK (4746613, no attorney)
  • 86557154 CRAWL, WALK,… (4801456, USA attorney)
  • 86593044 DON’T HATE ME JUST BECAUSE I’M A LITTLE COOLER (4822212, no attorney)
  • 86557157 GRANDPA SINCE… (4888163, USA attorney)
  • 86829703 I CAN’T ADULT TODAY (5233352, USA attorney)
  • 86048573 I CAN’T KEEP CALM I’M GETTING MARRIED (4704673, USA attorney)
  • 87314687 I CAN’T KEEP CALM I’M GOING TO BE (5262807, no attorney)
  • 86193612 I CAN’T KEEP CALM I’M HAVING A BABY (4531155, USA attorney)
  • 86893705 I CAN’T KEEP CALM I’M THREE (5040448, no attorney)
  • 86553820 I CAN’T KEEP CALM I’M TWO (4831335, no attorney)
  • 86381353 I CAN’T KEEP CALM IT’S MY BIRTHDAY (4746828, no attorney)
  • 86366622 I CAN’T KEEP CALM SANTA’S COMING (4708287, no attorney)
  • 86419264 I LOVE IT WHEN MY WIFE (4747528, no attorney)
  • 86180548 I LOVE IT WHEN MY WIFE (4747528, USA attorney)
  • 87143941 I’D RATHER BE SLEEPING (5259280, USA attorney)
  • 86096269 I’D RATHER BE WITH MY DOG (4680605, USA attorney)
  • 87392080 JESUS COFFEE YOGA (5483772, no attorney)
  • 85346472 KEEP CALM AND ACK NICE (4207307, USA attorney)
  • 86068193 KEEP CALM AND DRINK BEER (4615044, USA attorney)
  • 86147887 KEEP CALM AND GO GREEN (4616480, no attorney)
  • 85733161 KEEP CALM AND HEAD UP NORTH (4334580, USA attorney)
  • 86626134 KEEP CALM AND LET MIMI HANDLE IT (4870662, USA attorney)
  • 86616473 KEEP CALM AND LET NANA HANDLE I (4934349, USA attorney)
  • 86608447 KEEP CALM AND LET PAPA HANDLE IT (4870224, USA attorney)
  • 86580794 KEEP CALM AND LOVE (4921654, no attorney)
  • 86548075 KEEP CALM AND WORK OUT (4827027, USA attorney)
  • 87368670 LIFE IS BETTER IN THE STATE OF HI (5520501, no attorney)
  • 87422472 LIFE IS BETTER WITH PONIES (5462177, USA attorney)
  • 87592036 LIVE FREE VOTE RIGHT (5531740, USA attorney)
  • 88437177 MAKE AMERICA 2008 AGAIN (5887413, no attorney)
  • 87316922 MAKE AMERICA AMERICA AGAIN (5434465, no attorney)
  • 87247066 MAKE AMERICA BAIT AGAIN (5745986, USA attorney)
  • 87647993 MAKE AMERICA CRIP AGAIN (5584067, no attorney)
  • 87640172 MAKE AMERICA GAY AGAIN (5423542, USA attorney)
  • 88313491 MAKE AMERICA GENIAL AGAIN (5922731, no attorney)
  • 87980844 MAKE AMERICA GET RID OF HIM (5801960, USA attorney)
  • 88074014 MAKE AMERICA GRACIOUS AGAIN (5904620, USA attorney)
  • 87587829 MAKE AMERICA GRATEFUL AGAIN (5846093, USA attorney)
  • 88323003 MAKE AMERICA GREAT FOR EVERYONE (5922750, USA attorney)
  • 88305464 MAKE AMERICA GREY AGAIN (5844336, no attorney)
  • 87241293 MAKE AMERICA HIPPY AGAIN (5274785, USA attorney)
  • 87642380 MAKE AMERICA HOPE AGAIN (5588948, USA attorney)
  • 88204018 MAKE AMERICA PURPLE AGAIN (5987559, no attorney)
  • 87003415 MAKE AMERICA SANE AGAIN (5090487, no attorney)
  • 88306742 MAKE AMERICA UNIFIED AGAIN (5963603, USA attorney)
  • 88306629 MAKE AMERICA UNITED AGAIN (5963602, USA attorney)
  • 86557171 MY HEART BELONGS TO… (4831619, USA attorney)
  • 87260349 NAUGHTY NICE I TRIED (5274895, USA attorney)
  • 86337314 REAL MEN CHANGE DIAPERS (4746617, no attorney)
  • 86331627 REAL MEN LOVE CATS (4746596, no attorney)
  • 86557180 REAL WOMEN (4844657, USA attorney)
  • 86557182 THE DOGFATHER (5337799, USA attorney)
  • 86557184 THIS DUDE (4831620, USA attorney)
  • 86557191 THIS IS WHAT THE WORLD’S GREATEST… …LOOKS LIKE (4888164, USA attorney)
  • 86505049 WIFEY (5034202, USA attorney)

Sixteen of the nineteen KEEP CALM specimens were approved because, hey, after all, there’s a tag! In fact, one of them had ONLY a tag. Proper trademark use, Y’all.

Gad.

Disclaimer: I’ve said it before, I’ll say it again: I’m not picking on anybody, calling these owners bad names or anything else. And I’m reasonably certain USPTO’s passion for fairness prohibits anything but random audits of current registrations, so please don’t panic if you happen to own one of the marks highlighted anywhere in this series. My goal is education to support trademark reform for the benefit of all and to inspire business owners to play nicely with each other.

I’m not your enemy, and none of these marks affect me. And really, I’d rather be doing pretty much anything besides this post. But questionable trademarks harm all of us.

I have nothing against these owners. It’s just that… Y’all!

Applications to register terms in the typical novelty-product classes should be required to include specimen photos that show the entire product, not simply a tag or product packaging. Thankfully, USPTO is making this change to specimen requirements. But I hope they won’t end there.

I hope there will be more discussions about consumer perception and how novelty producers are gaming the system.

Because a tag doesn’t magically confer distinctiveness.

Thanks again, Dr. Roberts, for the lovely language.

This is Part 8a of a 12-part series about the threat and impact of questionable trademarks. The next poast is Part 8b. Or see below for a complete list: