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.

TM System Bias, Part 06a: USPTO’s POD Challenges

Trademarks referenced by this series are included only to illustrate how Trademark System Bias affects outcomes. See more. All opinions are my own. I'm not an attorney and you're not my client. When relevant, posts are sponsored or contain affiliate links. More Legal

Last updated on July 17th, 2020

In this post, you’ll learn about USPTO challenges that lead to a bias toward faulty trademark registrations.

Here’s something that really bugs me, y’all. It’s when people outside USPTO blame all the faulty registrations on the examining attorneys.

Private attorneys say things like,

“[Trademark] examiners need to be better trained so that improperly-used marks do not register…”

Attorney letter in support of Letter of Protest fees

Meanwhile, creatives say stuff like,

“What’s the matter with the [expletives deleted] examining attorneys? Are they being bribed? Don’t they think?”

Composite of comments posted in various Facebook groups

Sigh.

Y’all don’t understand the challenges examining attorneys face. Every. Single. Week. Challenges they face while doing a mind-numbing job I would not want on my nerdiest day.

Responsibility does not equal fault.

Is USPTO responsible for issuing valid marks? Yes.

Can they write the laws that determine which marks qualify? No.

The trademark system is biased in favor of faulty registrations. Yet this bias is not the fault of the USPTO. And it’s beyond the control of the attorneys.

Let’s talk about some big challenges examiners face. Later I’ll highlight USPTO’s efforts to minimize the damage fairly and efficiently.

USPTO Challenge: Duty to Adhere

Examiners are duty-bound to strictly follow The Lanham Act, case law applications of it, and Tammy TMEP’s sometimes incomplete or confusing summaries of what the case law says.

All of this legal mumbo-jumbo, stirred together in the pot, has created the bias toward faulty registrations. Examiners are simply fulfilling their duty to promote speedy registrations.

Y’all, USPTO’s biggest goal is to help businesses register their respective trademarks as quickly as possible so they can create value in the marketplace while protecting themselves and their customers from counterfeits and thieves.

It’s a grand endeavor, and the attorneys I’ve spoken with at USPTO are smart, capable, and passionate about what they do.

Presumption of Innocence

Examining attorneys cannot refuse a mark based on a “hunch” of how it might be abused. As my helpful Attorney-Advisor contact, Joe, explained, their hands are tied by silence in the case law, and by standards in USPTO’s Trademark Manual for Examining Procedures (“TMEP” — I’ve been calling her “Tammy TMEP” for fun).

The examiners must presume the best motives of the applicant and try to say yes. This is why they’re so quick to help applicants overcome an ornamental refusal, Y’all!

And if it was your application on the line, you’d be very grateful they’re trying so hard to help you jump through the right hoops to get your registration.

Even if examiners are aware that loopholes are being used by others to game the system, they don’t have the right to presume that’s what a particular applicant is doing. And considering how “exact” most legal beagles try to be with the written word, it’s surprising how much wiggle room exists for slipping questionable trademarks onto the register.

Duty When in Doubt to Err on the Side of Applicants

Here’s my take on what Joe’s had to remind me of many, many times: “If it’s a maybe, say yes. Disputable issues must be dealt with between the parties before the Trademark Trial and Appeal Board or in federal court.”

Which means examiners must approve questionable applications.

It’s as if the examiners have been assigned as public defenders. They’ve got to do their best to find reasons to acquit even if they have a hunch their client is guilty. If it turns out the applicant is a bad guy, well, they get to face their accuser in court. Make sense?

So can we please stop with all the examiner-shaming, PTO-blaming talk?

Please?

(I’ve probably come across that way in some of this series, and I reckon I need to go back and sanitize more of my opinion out. Because sometimes my sense of humor is, um, how you say? Not much funny.)

USPTO Challenge: Limited Case Law Examples

Tammy TMEP is the bossy big sister who tells Examining Attorneys what they have to do about each application.

The questionable trademarks being granted in great numbers are indicative of Tammy TMEP’s bias toward faulty registrations and the silence in case law

Informational References

Spend an afternoon with Tammy and you’ll discover she’s got very little to say about case law related to print-on-demand. Here are her examples of Informational Matter terms that reference typical novelty goods:

  • I ♥ DC for bags, clothing, plush toys
  • ONCE A MARINE, ALWAYS A MARINE for clothing
  • I LOVE YOU for bracelets
  • NO MORE RINOS! for bumper stickers, signs, and t-shirts
  • CLOTHING FACTS for clothing

Ornamental References

Tammy mentions a few other examples of novelty expressions, but mostly in her section on Merely Ornamental refusals:

  • BLACKER THE COLLEGE SWEETER THE KNOWLEDGE (for shirts?)
  • SUMO (with stylized representations of sumo wrestlers) on T-shirts and baseball-style caps
  • YOU ARE SPECIAL TODAY for ceramic plates
  • DAMN I’M GOOD on bracelets and on hangtags affixed to the goods

Descriptive References

There are two other obscure references that apply to print-on-demand, but they’re not in either of the above sections:

In Part 8 I’ll explain why these last two examples are unlikely to prevent faulty registrations despite their inclusion in TMEP.

If the specimen includes a hangtag or neck imprint, how many attorneys will take a deep dive into the Merely Informational and Generic sections of their manual looking for reasons to refuse? I probably wouldn’t. Would you?

But suppose the examiner is a trademark law ninja. You might think these eleven case law examples are enough to stop faulty registrations.

You’d be wrong.

Because sometimes Tammy TMEP is kinda vague.

This is Part 6a of a 12-part series about the threat and impact of questionable trademarks. The next post is Part 6b. Or see below for a complete list: