Trademark System Bias


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TM System Bias, Part 07b: Why Attorneys Oppose Letters of Protest

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Last updated on July 25th, 2020

In this post, you’ll learn how why some attorneys don’t like the Letter of Protest procedure and why arguments against keeping it free are flawed.

Overview

  • Part I: Attorneys oppose the Letter of Protest procedure because of misconceptions, misinformation, and short-sighted resistance to protests against their applications by those without “legitimate” interest
  • Part II: Trademark Watch Dawgs group members developed a reliable system for submitting protests to help ensure valid registrations while avoiding duplicate protests
  • Part III: USPTO staff provided impartial coaching to assist in the development of protest training units at Trademark Watch Dawgs
  • Part IV: Identification of invalid registrations requires industry-specific knowledge which examiners and private attorneys are unlikely to possess, making protests a vital key to a thorough review of applications

Opposition to the Letter of Protest procedure by attorneys is easy to find, and this isn’t surprising. They often have difficulty grasping why a Letter of Protest is available in the first place. Reasons opposing the procedure itself, or against keeping it free, are many. 

Part I: Why Attorneys Oppose Free Protests

Update (07/20/2020): In my first version of this post, I linked quotes from attorney posts and letters to support my credibility. But on further reflection, I decided I’d rather risk you thinking I’m making this up than damage the reputations of others who – for all I know – have changed their minds about what they said before. 

Reason 1: Protests are Secret!

Some folks don’t like the fact that protests are “secret.” They aren’t really. But an attorney called them that and we need to talk about it.

Sort of secret

The Applicant isn’t notified when a protest is filed. They are not notified if the protest is accepted for review, nor if it is denied for review. They’ll only be notified about it if the examiner issues a refusal based on the protest evidence. 

If no further action is taken by the examiner, the Applicant is not notified the protest was filed, because it doesn’t matter. Nobody cares. It’s not stopping the registration, so why bother? 

Not Really Secret

If the protest is accepted for review, that fact shows up in the TSDR documents for the application. Look for “Administrative Response” entries. If the response is about a Letter of Protest, the evidence that is accepted will be attached, and anyone can downloaded it for review, anytime.

If you are a nervous Applicant and you see a protest has been accepted, you may want to monitor the Prosecution History on the Status portion of the TSDR record. Look for an entry that says something like “Letter of protest reviewed – no action taken.” 

Why Protester Identity is Secret

Applicants aren’t the only ones who don’t know the protester’s identity. Examiners don’t know either! 

Tammy TMEP explains why, in the first paragraph about the Letter of Protest:

The letter of protest procedure… is intended to aid in examination without causing undue delay and without compromising the integrity and objectivity of the ex parte examination process. 

TMEP 1715    Letters of Protest in Pending Applications

Each Letter of Protest is “secret” because the evidence must be objective. The examining attorney doesn’t know who submitted it, because that knowledge could cloud their judgment. Plus, only reasonable and relevant, objective evidence is given to the examining attorney for consideration. Evidence that doesn’t fit the standard is discarded. 

Regardless of whether the examiner takes action on the protest, this relevant and reasonable evidence is in the public record. It’s attached to an ”Administrative Response” in the TSDR documents.

Reason 2: Protests manipulate the process!

More than once, I’ve seen attorneys imply or state outright, they think the protest process allows competitors to manipulate trademark review for their legal and financial advantage. 

But it doesn’t. The letter of protest allows interested parties to present objective evidence in order to help avoid faulty trademarks and trademark abuse in any industry

All that’s required is someone who cares.

Reason 3: Big brand owners use the protest procedure to abuse competitors!

Also more than once, I’ve seen attorneys imply or state, the protest process is used by big brands to bully little brands. They assume big brands are the target users, because they are the ones with big bucks and big legal teams. 

Again, not true. 

The Letter of Protest is a protection tool for the little guy. It’s a brilliant process to level the playing field. With a Letter of Protest, small business owners (“Davids”) can help USPTO avoid faulty registrations that enable big brand owners (“Goliaths”) to bully competitors.

Where else can David face Goliath in the trademark process and hope to win? 

Little guys have way more time than money. They probably can’t afford a Petition to Cancel. The Letter of Protest gives them a chance to be protected from trademark overreach by the big boys.

(That’s only the first of several reasons it should be free, Y’all. But I digress.)

Incidentally, the one time I saw an attorney use the system, they violated the protest rules with several pages of legal argument. Arguments are not allowed, Y’all.

Which just goes to show ya, filing a proper protest isn’t easy, even for attorneys. It’s a lot different than the types of proceedings they are used to. 

Reason 4: Unskilled protesters bog down the system with multiple frivolous protests!

Woe is me. 

When USPTO solicited comments about the proposed Letter of Protest fees in 2019, an attorney supported the fee based on their supposition that protesters bog down the system with multiple frivolous protests. In their letter, they asserted protesters from Trademark Watch Dawgs

  • scrape Amazon listings to find brands to protest
  • file multiple (duplicate) protests to harass competitors
  • file protests against applications to register common words (e.g. dog) 
  • don’t know what is frivolous

Based on these assumptions, they assert that protests by people who “have no legal training” are of little merit and should be discouraged absent a “legitimate interest.”

But, thanks to USPTO’s fantastic staff, none of their assumptions are true. Let’s take them one at a time. 

(Later I’ll explain how USPTO advisors made it possible for ‘unskilled” protesters from Trademark Watch Dawgs to identify clear errors by USPTO examiners, on average, once a month during their first year of existence, and see another 150+ protests accepted based on the objective, reasonable and relevant evidence they contained.)

The Protest Benefit Attorneys Overlook

Attorneys and applicants overlook the great benefit protests offer: valid trademark registrations. There are two options when it comes to getting a registered trademark:

  1. Register a distinctive trademark and focus efforts on building a loyal customer base for an exceptional product.
  2. Register a weak trademark for a widely used slogan or descriptive term and spend thousands of dollars over the next five years in constant legal battles trying to avoid cancellation.

Part II: The TWD Protest Training System

Obviously I can’t speak for all protesters, or even all Trademark Watch Dawgs protesters. But I can tell you about their training system because I helped develop it. I’ve seen it work repeatedly for myself and others and can testify to its usefulness as a self-vetting system to provide quality protests. 

A System That Avoids Content Scraping & Duplicate Protests

In Part 7a I outlined some of the process Trademark Watch Dawgs went through to develop their educational resources. “It was trial and error, all the way” and involved many consultations with USPTO staff (more on that later). 

Even in our first weeks of filing protests, we learned that USPTO’s rules prohibit more than five protests against a single application. 

Public opinion may not be used to influence the application process; therefore, mass mailings by special-interest groups will not be made part of the record.  Letters of protest that raise the same objection to registration submitted by five or more different parties will be considered a mass mailing.

TMEP 1715.01(b)    Issues Inappropriate as Subjects of Letters of Protest

For this reason, one of the Trademark Watch Dawgs admins (an expert user of Airtable’s free online database software) developed an Airtable to collect questionable marks, protect sensitive data, and avoid duplicate protests:

  1. Members report frivolous trademark applications via a single-record portal that prevents “scraping” of the list and may volunteer to file the protest (or not) as they choose.
  2. Admins compare new Airtable submissions with the current list to consolidate duplicate entries and coach members on appropriate next steps.
  3. Next steps may include offering assistance on a pending protest, monitoring TSDR for protest results, or collaborating on a post-publication protest if an early protest is reviewed but the examiner takes no further action.

At all stages in the process, duplicate protests are discouraged and avoided. But, since TWD members make up only a tiny percentage of all players in the print-on-demand industry, duplicate protests are unavoidable. 

Aside: About TWD Fee Letters References to “Common Words”

Some think that Trademark Watch Dawgs members claim any trademark using a common word is, by their definition, “frivolous.”

Well, I understand why they think that, but it’s not the whole story by a long shot. 

Here are the three factors that – because attorneys are not industry insiders – most lawyers don’t understand about print-on-demand protests and especially about Trademark Watch Dawgs members’ letters in opposition to the proposed protest fees:

1. The “common terms” examples in letters opposing the protest fees are decoys used to Illustrate the Problem While protecting assets

Savvy members are reluctant to give examples of actual questionable trademarks. Why? Easy. 

1 popular phrase x 8,000 group members = 0 sales (due to the suddenly saturated market)

The sad fact is, many newbies to print on demand don’t understand the difference between offering alternative designs or variations of common phrases versus copycat designs that compete on price. 

So when it comes to revealing actual “common terms” from the current market, “err on the side of caution” is a cardinal rule for sellers who want to stay in business!

2. The “common terms” examples are vital keywords to print-on-demand (even though they DO qualify for trademark registration)

So sad. I wrote about this in a different post. 

Is it likely that many of the TWD members citing common words like “Dog” in their letters against protest fees are unqualified to judge what constitutes a frivolous trademark? Sure.

But it doesn’t matter, because by the time they go through the process of trying to protest a mark like that, they’ll figure things out (more on that in a jiffy).

Creatives are understandably upset when words like “Dog,” “De Nada,” and “Mashed Potatoes” are registered. 

These are valuable marketing terms for novelty products. For example, the Ubersuggest app shows there are over 18,000 monthly searches for “dog shirt.” 

Ubersuggest shows 18,100 monthly searches for “dog shirt”

It’s pretty likely that many of those 18,100 searches are being done by people who want to buy a dog shirt. Yet trademark registration means the term cannot be used on Amazon product pages, Google ads, Facebook ads, Etsy listings, and so on. 

It doesn’t matter what the intentions or actions of the owner are. 

True, under the current laws, this term qualifies for trademark registration (assuming proper trademark use). But here’s why this misunderstanding by newbies doesn’t matter…

A Self-Vetting System That Avoids Frivolous Protests

It doesn’t matter if protest newbies don’t “get it” at first. As they go through the training to prepare their first protest, the search for “exact match” evidence will reveal their misunderstanding. Further discussions within the group will help clarify key concepts. 

In the year I spent with Trademark Watch Dawgs, the USPTO accepted over 150 protests. They didn’t do that because they’re such pushovers. They did it because we presented reasonable and relevant evidence that the examiner deserved the opportunity to review. 

That paragraph bears repeating.

In the year I spent with Trademark Watch Dawgs, the USPTO accepted over 150 protests. They didn’t do that because they’re such pushovers. They did it because we presented reasonable and relevant evidence that the examiner deserved the opportunity to review.

About “Legitimate Interest”

Some attorneys think only competitors with a “legitimate interest” should be allowed to protest trademark applications. But that’s silly, because every faulty registration affects so much more than direct competitors.

Dr. Roberts points out in Part 5b, every faulty registration has a chilling effect on the market. And every questionable trademark registration makes it that much more likely that another will be granted later. (Remember MAKE AMERICA UNITED AGAIN and MAKE AMERICA UNIFIED AGAIN in Part 5f? And we’ll see some other examples of this when we talk about the Halo Effect.) 

Friend, I have had zero “legitimate business interest” in any of the marks I protested. 

Zero. 

As in, none of them affect my paltry portfolio of designs.

So why did I devote most of 2018 to learning how to use the trademark Letter of Protest system and collaborating with other Trademark Watch Dawgs members on a training system for filing protests? 

Because every faulty registration has a negative impact on our free market system. 

Thankfully, USPTO recognizes this. 

Those are two strong statements. I’ll prove them both to you with one case study.

Part III: How USPTO Shaped Training Units at TWD

One huge reason protests by members of Trademark Watch Dawgs have been so successful is that USPTO’s staff attorneys graciously answered questions and encouraged us to do our part. Mind you, they observed a strict code of impartiality. 

Never once in my many calls to Joe did he express an opinion or give instruction regarding a specific application. He answered many questions about evidence requirements, legal definitions, and more, always with the utmost professionalism. 

Other group admins and members reported the same exemplary treatment by USPTO staff. 

USPTO Protest Coaching Case Study: Feliz Navidog

It’s embarrassing to admit, I had to ask some of the same questions many times before I grasped the answer. (#menopause #insomnia #memoryloss #squirrel)

Let’s take FELIZ NAVIDOG (SN 87649609) as an example. Someone filed a protest that was accepted three weeks before the examiner searched for conflicting marks. The examiner reviewed the protest but took no further action. 

USPTO Coaching Tip #1: How and when to file a post-pub protest

I spoke with Joe, my Attorney Advisor contact at USPTO. He was unable to comment on why the examiner chose to disregard the protest but said we were welcome to file a second, post-publication protest if we could show evidence that registration would be a clear error. 

However, the second protest needed to be done by somebody else. This USPTO policy exists to prevent people from harassing examiners. The idea behind it is, “You had your chance to object, now move along.” Understandable.

(Joe discouraged a second pre-publication protest because if the examiner took no action on the first pre-pub protest it’s unlikely they’d take action on a second one. Always the goal is to streamline the process for the greatest efficiency.)

I worked closely with another TWD member (who collected most of the evidence) to prepare a post-publication protest. My part was mostly to prepare the index, a crucial time-saver for the PTO Attorney Advisor who would review the protest for acceptance or denial. 

Coaching Tip #2: How to fix protest errors and improve evidence 

Immediately after submitting the post-publication protest on Saturday, I discovered I’d made a major mistake on the index. First thing Monday morning, I spoke again with Joe. He told me to submit a corrected protest with a note of explanation. 

He also explained I should include mugs, prints, and other novelty products. (I’d thought so before, but was later confused by the “relevant” requirement). So I added these to the evidence before refiling the protest on April 17.

Thanks to teamwork and brilliant impartial coaching by USPTO staff, the post-publication protest was accepted. Commissioner Denison agreed the examiner made a clear error and USPTO avoided a faulty registration. 

Better still, the things we learned from this and other protests were incorporated into training materials in the Trademark Watch Dawgs Facebook group for the benefit of all.

But that wasn’t the end of it. Later, the other member who worked on that protest contacted me privately. He sent me a gift card for Amazon and a note that thanked me for filing it. You see, that one trademark would have taken down the products that supported his family while his dad went through chemotherapy the year before

Don’t tell me one faulty trademark isn’t a big deal. 

It’s a big deal. 

Part IV: Proof That Protests are Vital to Valid Registrations

Throughout this blog series, I share many examples of questionable or even obviously faulty registered trademarks. The problem isn’t that examining attorneys are incompetent or biased. Nor is it that Applicants’ attorneys must either be incompetent or wicked slimeballs.

Just because an attorney gets some things wrong, doesn’t make them a bad attorney. They are like many other attorneys who are unable to see through the lens of their clients’ competitors. Attorneys whose trademark applications the USPTO rejected after considering objective evidence of registrability. 

The problem is that assessing the registrability of a mark requires BOTH a good grasp of trademark law and a clear understanding of how a term is used in the relevant industry

Let’s highlight that point for all you skimmers:

The problem isn’t that attorneys are somehow incompetent or unqualified. The problem is that assessing the registrability of a mark requires BOTH a good grasp of trademark law and a clear understanding of how a term is used in the relevant industry.

And that’s why the Letter of Protest is such a valuable vital tool for ensuring valid registrations. 

I left Trademark Watch Dawgs in early 2019 to focus on personal projects. The system we developed to vet applications and prepare high quality, relevant and reasonable protests was working and it continues to work. 

The next post will reveal fourteen applications that USPTO approved for registration and published for opposition. Had it not been for the Letter of Protest procedure, fourteen faulty registration stood to take down hundreds of legitimately competing products, representing a sudden enormous loss of revenue among sellers and a huge hit to our economy.

This is Part 7b of a 12-part series about the threat and impact of questionable trademarks. The next post is Part 7c.

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