Trademark System Bias


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TM System Bias, Part 07c: Letters of Protest Results

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 21st, 2020

The Letter of Protest is an imperfect, much-maligned, yet incredibly useful procedure. Here’s proof that protests are key to valid trademark registrations.

Overview:

  • Members of Trademark Watch Dawgs provided reasonable and relevant evidence pertaining to the registrability of over 150 trademark applications in the group’s first year
  • Trademark Watch Dawgs trademark letters of protest stopped 14 applications that USPTO examiners approved for publication, and proved Clear Error in 12 of the 14 cases
  • Multiple protests are unavoidable because examiners may disregard early evidence and approve marks in error
  • Duplicate protests are unavoidable because around 90% of industry stakeholders do not participate in TWD or other organized efforts to coordinate protests

The Trademark Watch Dawgs Protest System Works

If I didn’t have a life, maybe I’d spend the next several days documenting the 150+ pre-publication protests that USPTO Attorney Advisors accepted during my time at Trademark Watch Dawgs. Meaning, they decided the evidence was reasonable and relevant to assessing the registrability of the proposed mark.

In case you’re wondering, these protests were filed by many different people, not just a handful of admins or experts.

So how is such a high degree of protest acceptance possible? As I explained in Part 7b, the training units developed by admins at Trademark Watch Dawgs produced a self-vetting system, avoiding moot or duplicate protests.

Letters of Protest Results: A Useful Tool to Promote Quality Registrations

Of course, not all 150+ protests resulted in examiners issuing refusals (although many of them did.) What’s more important are the protests that were accepted but disregarded. We’re talking about when examiners approved ineligible applications for publication despite having evidence of unregistrability from protests.

We know the applications should have been denied because the Commissioner of Trademarks said so. After USPTO Attorney Advisors approved our post-publication protests, the Commissioner looked at the evidence in each case and ruled that a clear error had been made. (As you will see throughout this series, these errors are not entirely the fault of the examiners. Often they are the result of our trademark system’s strong bias toward faulty registrations. Which is the point of this series, Y’all.)

About Multiple (Pre- and Post-Publication) Protests

So, yes, some applications received both a pre-publication protest and a post-publication protest. That’s because, especially in the beginning of Trademark Watch Dawgs’ protest efforts, examiners were less aware of how to spot ineligible applications and less likely to understand the significance of the evidence. (Print-on-demand can be pretty tricky! More on that later.)

If the pre-publication protest was ignored and sufficient evidence of clear error seemed to exist, often someone from Trademark Watch Dawgs filed a post-publication protest. Not all post-publication protests filed the first year were accepted. Those that failed provided insight into otherwise obscure factors USPTO examiners must consider to determine registrability.

In a strange way, the protests that “failed” were an encouraging reminder of USPTO’s goal to support small businesses. And USPTO’s gracious explanations of the reasons they denied certain protests helped us understand why some issues are best decided before the Trademark Trial and Appeal Board.

Registeration of 14 Erroneously-Approved Applications Avoided

In 2019, I left the Trademark Watch Dawgs group to pursue private interests. Here are fourteen ineligible applications that examiners erroneously approved for publication. These marks would have proceeded to registration without the evidence submitted by post-publication letters of protest (scroll on this embedded Airtable to see the specimens and key facts about each application; click on individual cards for a closer look):

Source: author’s 2020 TM Applications Tracker Airtable, Post-Pub Accepted view.

In case the embedded Airtable doesn’t work properly, here are the marks:

  • AFFIRMATIONS (SN 87859333)
  • CHICKEN WHISPERER (SN 87711946)
  • DRAMA LLAMA (SN 88012018)
  • EGG SPECTING (SN 87030334)
  • FELIZ NAVIDOG (SN 87649609)
  • GIRLBOSS (SN 87959379)
  • HODL (SN 87597378)
  • I’M KIND OF A BIG DEAL (SN 87772719)
  • LIKE A BOSS (SN 88090544)
  • LITTLE SISTER (SN 87790714)
  • MAMA BEAR (SN 86923714)
  • MAMA BEAR (SN 88011770)
  • UNICORN SQUAD (SN 87678692)
  • WE CAN DO IT (SN 87899371)

The above fourteen marks were all published for opposition. Meaning, they were heading toward trademark registration. Two of them (CHICKEN WHISPERER and UNICORN SQUAD) accepted pre-publication protests after publication.

In other words, those two protests were submitted prior to publication, but not accepted until after the marks were published for opposition. (If I remember correctly, USPTO’s computer system requires at least three weeks advance notice to suspend or change the publication date. So protests submitted during this window do not affect whether the mark is published for opposition. In such cases the evidence is reviewed using the pre-publication standard.)

Why Post-Publication Protests Matter

The other twelve applications were all stopped with post-publication protests. This is a big deal. Each time USPTO accepts a post-publication protest and posts it online, it means the Commissioner of Trademarks has agreed the examiner’s approval for registration was a “clear error.” This evidence standard is much higher than for a pre-publication protest.

In seven cases, the post-publication protest was a second (or even third) protest of the mark. This means that, even with a protest to point examiners toward evidence that affects the registrability of a term, over 50% of the time the examiner did not take action.

That’s not to say examiners are stupid or negligent. It is to say, the system is biased toward faulty registrations. And it proves the validity of what Joe told me many, many times: the trademark system depends on participation by industry insiders to work properly. Attorneys cannot be expected to know the ins and outs of every industry. This is why the Letter of Protest system exists.

Bottom line: fourteen almost-registered faulty trademarks were avoided. Seven of these ineligible applications were prepared by attorneys. Another reminder, USPTO’s requirement of attorney-prepared applications is also no guarantee of registrability.

[Update: USPTO reversed their refusal of GIRLBOSS. Sad news for the hundreds of business owners serving women who identify with this generic, user-identifying, “feminist/empowered woman” synonym. I’ll explain how the applicant used faulty reasoning and the Halo Effect to nullify TMEP in a later post. (Just my two cents. I’m not an attorney and have nothing against the Applicant, Y’all. Their attorney is working the system to maximize profits for their client, which is the moral obligation of every trademark attorney. So please do not twist any examples in this series into a personal attack on any person or business. It’s the system that needs fixing.)]

About Duplicate Protests

AFFIRMATIONS and EGG SPECTING were each protested a second time, anonymously, presumably by someone outside the Trademark Watch Dawgs group. Such duplicate protests are a key reason the Trademark Watch Dawgs group promotes a coordinated effort. As more business owners learn about the Letter of Protest process, a system for minimizing duplicate protests is crucial to avoid burdening USPTO with duplicate evidence.

The Trademark Watch Dawgs group is only around 8,000 members. This is barely over 10% of the known participants in Merch By Amazon, Amazon’s print-on-demand platform. And who knows how many of Etsy’s 2.1 million sellers incorporate print-on-demand or digital products into their stores? (SVG design files and printable posters, for example.)

The number of owners affected by a trademark application will directly affect the likelihood of duplicate protests being filed. So far, this problem has been minimized through systems at Trademark Watch Dawgs that allow any member to volunteer for a specific protest and track results. Suppose a second member wants to protest the same application? Group administrators can connect the interested parties so they can collaborate on the singular protest (or not) as desired.

That’s not to say TWD has a perfect protest system. In Part 8 I’ll share some lessons learned in my quest to become a Letter of Protest Whisperer. (Joke. Sort of. Hope the Dog Whisperer and Lash Whisperer people don’t come after me!)

In spite of all that has already been done to eliminate ineligible applications and faulty registrations, there’s a lot left to do to clean up the mess.

This is Part 7c of a 12-part series about the threat and impact of questionable trademarks. The next post is Part 8a. Or see below for a complete list: