Trademark System Bias


Welcome to a series about the threat and impact of questionable trademarks.
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TM System Bias, Part 05d: Case Study: Life Is Good

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Last updated on July 17th, 2020

Case Study: “Life is Good.” Learn how USPTO’s myopic refusals unintentionally strengthen weak trademarks.

IMPORTANT: Trademark System Bias is the villain in this case study. I applaud the grit of LIG’s founders and the virtue of their mission.

Life is Good, Inc., survived a Petition to Cancel their “Life is good.” mark in 2006. The litigation was suspended when the LIFE IS GOOD owner countered with a civil suit against the petitioner. The Petition to Cancel was later terminated. Still, the trademark registration of this T-shirt slogan is instructive for a couple of reasons…

LIFE IS GOOD was used for Trademark Overreach

First, the petition was brought by LG Electronics after Life Is Good, Inc. (LIGI) told them to stop using “Life’s Good.” as a tagline for LG Electronics.

Gad.

“Like, I know you guys sell electronics and all, and our trademark is registered for, like, you know, T-shirts, but our attorney said we’d better, you know, like, make you guys stop using your tagline because, um, something about it was, like, confusing to college kids and, you know, like that.”

(I’m not picking on the company founders. I’m trying to point out what happens when trademark owners get bad trademark advice from their “trademark” attorneys.)

LIFE IS GOOD’s First Refusal was Myopic

The Petition to Cancel points out,

LIGI has used “Life is good.” as mere ornamentation to adorn its products and to market the message of optimism inherent in the ordinary meaning of the expression “life is good.” LIGI has continued to use “Life is good.” in this manner despite previously having been refused registration of the mark “LIFE IS GOOD” (Serial No. 74/633,170) on the ground that LIGI’s use was a merely ornamental, non-trademark use.

LIFE IS GOOD – TTAB Petition to Cancel (Page 2)

So here’s what’s terribly sad about this.

The initial refusal of this slogan was based on “merely ornamental, non-trademark use.” It should have also included “Sections 1, 2, 3, and 45 Refusal – Informational Matter – Widely-Used Commonplace Expression.” Because it didn’t, the petitioner faced a nearly-impossible battle.

Myopic Refusals Strengthen Weak Trademarks

Dr. Roberts says things so much better than I.

…registration matters because by the time a mark becomes entangled in an infringement case, questions that arise early in the mark’s life, especially use as a mark and inherent distinctiveness, appear settled—the presumption of validity and the duration of the marks’ use often lead courts to treat those questions as resolved. [Emphasis added]

Alexandra J. Roberts, Trademark Failure to Function, 104 Iowa L. Rev. 1977 (2019) (at Footnote 32)

When the examiner lists only one cause of refusal, the TTAB assumes other possible reasons for refusal were considered and dismissed.

In other words, an examiner’s initial refusal based on ornamental use is the only legal basis the Trademark Trial and Appeal Board is likely to consider as a basis for canceling the registration. They’ll assume the term’s failure to function as a mark was already considered by the examiner.

Maybe so, maybe not. There are plenty of loopholes in TMEP that allow the registration of faulty trademarks. (See Parts 6, 8, 9, and 10 of this series.)

A second application for the same mark registered. The owners have held this widely-used, commonly understood, optimistic message hostage ever since, filing lawsuits against anyone who would dare to use it or a variation of it in their brand name or tagline. (See a list of suits under “Prosecution History” on the TSDR record for LIFE IS GOOD.)

Thus, trademark registration became the vehicle to create distinctiveness by eliminating competition. This is not the purpose of trademark.

(For the record, the brand story of “Life is Good.” is truly inspiring. It’s a great tale of grit, determination, and vision. Too bad it’s also a tale of trademark travesty and intellectual property injustice.)

This is Part 5d of a 12-part series about the threat and impact of questionable trademarks. The next post is Part 5e. Or see below for a complete list: