Trademark System Bias


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TM System Bias, Part 06b: TMEP’s Fuzzy Language

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Last updated on July 17th, 2020

In this post, you’ll learn about fuzzy language in the Trademark Manual for Examining Procedures.

6b TMEP’s Vague “Merely Informational” Language

The Trademark Manual for Examining Procedures (TMEP) leaves plenty of wiggle room for faulty registrations.

Vague Informational Matter Overview

Take TMEP 1202.04 – Informational Matter, for example. Tammy TMEP is just vague enough in her first few paragraphs that a whole lotta goofy expressions end up being registered that are incapable of functioning as trademarks. Check out this quote:

Matter is merely informational and does not function as a mark when, based on its nature and the context of its use by the applicant and/or others in the marketplace, consumers would perceive it as merely conveying general information about the goods or services or an informational message, and not as a means to identify and distinguish the applicant’s goods/services from those of others.

Because the function of a trademark is to identify a single commercial source for particular goods or services, if consumers are accustomed to seeing a term or phrase used in connection with goods or services from many different sources, it is likely that consumers would not view the matter as a source indicator for the goods or services. [Emphasis added.]

TMEP 1202.04 Merely Informational Matter

If I were Queen of Quality Trademarks, I would force Tammy to change those two paragraphs. Why?

She said nothing about “informational” to broaden its definition beyond information about goods or services. Nothing about variations of widely-used informational and social messages. (She’ll mention them much later.) 

She mentions terms and phrases used in connection with goods or services from many sources, but says nothing about brand new novelty slogans

And social messages and novelty slogans are the sources of most of the faulty registrations in the print on demand industry.

Nebulous Definitions of “Informational”

Let’s take on an example.

Most creatives think “informational message” applies to “BOYMOM” so it obviously fails to function, right? As in, every mom on the planet would recognize this as INFORMING others of the wearer’s accomplishments.

After all, it’s shorter and faster than saying, “I’m surviving endless days of blessed noise, mud, and bloody bike wrecks, and I’m mostly happy about that. Feel free to offer me chocolate.”

Merely Informational Bullets

But what YOU think is an “informational message” is not what TMEP (at first glance) says is an “informational message.”

Don’t believe me? Tammy TMEP explains “merely informational” as:

  • The matter merely conveys general information about the goods or servicesSee TMEP §1202.04(a).
  • The matter is a common phrase or message that would ordinarily be used in advertising or in the relevant industry, or that consumers are accustomed to seeing used in everyday speech by a variety of sources. See TMEP §1202.04(b).
  • The matter is a direct quotation, passage, or citation from a religious text used to communicate affiliation with, support for, or endorsement of, the ideals conveyed by the religious text. See TMEP §1202.04(c).

Notice the word “information” is only in the first bullet point.

“Information about the goods or services” would be something like “stainless steel” for garlic presses, or “100% cotton” for shirts. That won’t stop an application for BOYMOM.

Lawyers could probably write reams in support of the registrability of this term based on TMEP and case law. Yet the average consumer translates it as “I am the mother of a boy. I’m thrilled and exhausted. Pray for me, Y’all.”

It’s an informational statement of fact, not a source indicator. Not to mention, it’s also merely descriptive of the intended users. And with all due respect to whomever the owner of that mark is, I’m just sayin, they done slipped through some loopholes.

TMEP’s Vague “Widely-Used Message” Language

Now here’s where Tammy TMEP is REALLY silly. She’s got an idea of how variations of widely-used messages affect the grocery industry, but she leaves a lot of wiggle room for print on demand.

Derivatives or variations of widely used messages also fail to function as marks if they convey the same or similar type of information or sentiment as the original wording… See In re Melville Corp., 228 USPQ 970, 971 (TTAB 1986) (finding BRAND NAMES FOR LESS failed to function as a mark based evidence of widespread use of similar marketing phrases, noting that “[t]he fact that applicant may convey similar information in a slightly different way than others is not determinative.”)

TMEP 1202.04(b) Widely Used Messages

That little quote is why grocery stores can’t register a key phrase found in “similar marketing phrases.” But brand new novelty slogans (the ones consumers are not yet “accustomed to seeing… used in connection with goods or services from many different sources“) are not covered by this language.

Because novelty expressions are not considered “marketing phrases” Y’all.

So Tammy’s language about “similar phrases” is often disregarded, at least when it comes to Letters of Protest.

Most definitely it’s disregarded with respect to post-publication Letters of Protest. Unless the evidence shows an EXACT MATCH for the expression, the protest will not be accepted. (This was the experience of Polly Protester and Joe confirms it.)

Ignoring the Context of “Common Phrases”

Skip back up to the top, to that second bullet point: “common phrase or message… used in everyday speech.” This is the Grand-Canyon-sized loophole that allows new novelty expressions to get trademark registration. All Day Every Day. Just add a word, Mama, and you’re good to go.

When applications include common phrases as part of a longer expression, most of the time the application will be granted. Because, after all, MAMA ALL DAY EVERYDAY is distinctive, right? Nobody else has registered it yet.

Ain’t nobody sees BOYMOM on a shirt and thinks it’s a brand. Same thing for MAMA ALL DAY EVERYDAY Y’all.

I’m not pickin’ on anyone. Just digressin’.

Collateral Damage vs. Faulty Registrations

The sad fact is, there’s nothing legitimately available in the IP world to protect these “assets” from copycats. I get it. But this is not an appropriate use of trademark.

Copycats and stolen profits are the collateral damage of issuing only valid registrations. I wish it wasn’t so. But faulty registrations hurt more people in more ways.

Trademarks, used to “protect” a novelty slogan or expression, “chill competition.” (Thanks, Dr. Roberts, for such a lovely expression.)

We’ll talk more about this in Part 8. (Me and the mouse in my pocket.)

Tammy TMEP also has a strict definition of “descriptive” that makes it hard to stop questionable trademarks. We’ll talk about that later, too.

Bottom line: Lord Case Law and Tammy TMEP both have a lot of fuzzy language when it comes to applying what Lord Lanham Act says to the print-on-demand industry. They just do. And unless it’s a “NO WAY!” then examiners must say yes.

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