Trademark System Bias


Welcome to a series about the threat and impact of questionable trademarks.
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TM System Bias, Part 08b: Intent To Use Loophole

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 how Intent to Use trademark applications are nearly impervious to post-publication Letters of Protest.

Novelty expressions that are not yet used in commerce are among the most common type of bogus trademarks. That’s because USPTO’s over-reliance on “use in commerce” to determine registrability is often exploited.

Case Study: Black Lives Matter Spin-Off

COLORED LIGHTS MATTER MERRY CHRISTMAS (SN 87594788) was very nearly a registered trademark.

“No way!”

Yes, way.

The only reason it didn’t register is that the applicant failed to file their statement of use.

Never mind that this message is an obvious parody of the “Black Lives Matter” social campaign. (Polly Protester submitted a post-publication protest, but it was refused. More on that later.)

This is one battle Polly was glad to lose because the trademark owner is a veteran. Nevertheless, it’s rather incredible that USPTO deemed COLORED LIGHTS MATTER MERRY CHRISTMAS a source indicator.

How on earth did this happen? Easy-peasy, sweet Louisey:

  1. Loopholes (inadequate specimens, intent to use, partial phrases)
  2. Fuzzy language
  3. Letter of Protest limitations

If it’s too much trouble to print the tag at your local Kinko’s, a mock-up will often suffice. Especially if you are filing an application based on “Intent to Use – Section 1(b).”

No specimen was filed, but here’s the drawing for COLORED CHRISTMAS LIGHTS MATTER MERRY CHRISTMAS:

Colored Christmas Lights Matter Drawing

Where’s the “shakes head” emoji on my keyboard?

Let’s state the obvious: novelty products are decorated with expressions that are NEW.

Did you notice a hilarious meme?

Quick! File a trademark application! You can add it to your T-shirt empire!

Intent to Use Loophole: Protest Immunity

Registration before use in commerce is practically guaranteed because a Letter of Protest will probably fail.

In the case of COLORED LIGHTS MATTER MERRY CHRISTMAS, Polly Protester stumbled across the application after it had been published for opposition.

Evidence to support a refusal at the post-publication stage in the examination process requires (at a minimum):

  • many types of products
  • offered on several platforms
  • each product displaying an EXACT MATCH of the phrase

Well, guess what?

Even the owner of the mark hadn’t produced a single product displaying the exact phrase.

Nevermind that “Black Lives Matter” spawned many similar parodies (the following phrases decorated shirts and other products on Amazon at the time of the protest filing, but all evidence was refused for this post-publication protest):

  • Blue Lives Matter (Police)
  • Single Lives Matter (Singles Awareness Day)
  • Drunk Lives Matter (St. Patrick’s Day)
  • Chicken Lives Matter (Easter)
  • Cinco De Mayo Matter
  • Beard Lives Matter (Father’s Day)
  • American Lives Matter (July 4th)
  • Teachers Lives Matter
  • No Lives Matter (Halloween)
  • Turkey Lives Matter (Thanksgiving)
  • Santa Lives Matter (Christmas)
  • Elf Lives Matter (Christmas)
  • Black Lights Matter
  • Bee Lives Matter (Beekeepers)
  • Belgian Lives Matter
  • Blonde Lives Matter
  • Colorblind Lives Matter
  • Nerd Lives Matter
  • Old Lives Matter (Grandparents)
  • Squirrel Lives Matter (Squirrel Lovers)
  • Tow Lives Matter (Tow Truck Operators)
  • White Lives Matter
  • Zombie Lives Matter
  • Black Angus Lives Matter
  • Black Ice Matters
  • Black Cats Matter
  • Black Kings Matter (African Pride)
  • Black Labs Matter
  • Black Rifles Matter (2nd Amendment)
  • Drunk Friends Matter
  • Irish Livers Matter
  • Square Lights Matter
  • Thick Thighs Matter
  • Drunk Wives Matter

(Side note to Merch By Amazon participants: Parody is a pretty dumb thing to do on Amazon. Putting any of the above slogans on your products could place your account at risk. Don’t be foolish. Besides, exploiting human tragedy to make money is wicked.)

Filing an Intent to Use application is the tried-and-true tactic of exceptionally savvy applicants and trademark attorneys. I’m tempted to make this post private because this loophole is kind of the granddaddy of trademark registration loopholes.

An Intent to Use application doesn’t require a specimen until after the application is published for opposition. And if the specimen fits the Hangtag Strategy, it’s game over.

But there’s another reason Intent to Use applications are extra-damaging to the print-on-demand industry. They create temporary virtual monopolies, no specimen required.

Case Study: Pumpkin (SN 77023155)

Here’s an extreme example.

Someone filed an Intent to Use application to register PUMPKIN for many varieties of clothing, including T-shirts (SN 77023155). The original filing basis was two-fold: 1(b) – Intent to Use, and 44(d) – Foreign Application Pending. Just before registration, the basis was amended to 44(e) – Foreign Registration, and the Intent to Use basis was removed.

(PUMPKIN is a keyword that affects print-on-demand. As I explained in another post, most single words do qualify for trademark much to the dismay and possible harm of novelty producers. Imagine for a moment that instead of PUMPKIN the proposed trademark was for MAKE PUMPKIN SPICE LATTE AGAIN. Sadly, it’s not much of a stretch to think such a phrase could be registered.)

Back to our example. Here’s the Status page from TSDR:

USPTO record for Pumpkin (SN 77023155), a trademark registration held 6.5 years without a specimen

Check out the timeline of this trademark:

  • 10/17/2006 – Application filed
  • 7/20/2010 – Trademark registered
  • 02/24/2017 – Registration cancelled because registrant did not file an acceptable declaration under Section 8 (translation: no acceptable specimen was ever filed)

So for six and a half YEARS the owner was granted trademark protection rights without ever submitting a specimen, an actual product. Not one!

Implications for Print-on-Demand

Here’s why this matters so much to print-on-demand / novelty product suppliers.

Trending expressions are among the most profitable products in a novelty store. Phrases that resonate with the current culture are extremely attractive to buyers.

So think about our hypothetical MAKE PUMPKIN SPICE LATTE AGAIN application. The “joke” of this expression only makes sense in the context of President Trump’s “Make America Great Again” slogan. Suppose an Intent to Use application for this phrase is registered. (Based on what we learned from COLORED CHRISTMAS LIGHTS MATTER MERRY CHRISTMAS, this wouldn’t be hard to do.)

What happens next? The owner will most likely…

  • create a few designs
  • upload the digital files to Amazon, Etsy, and other platforms
  • enjoy “first to market” profits for creating a slogan linked to a cultural trend
  • enforce their “trademark rights,” endangering the accounts of competitors who could otherwise offer consumers additional products with alternative designs using the same or similar wording
  • let the registration proceed to cancellation after Trump leaves office and the slogan loses its “oomph”

In other words, Intent to Use applications allow applicants to control a virtual monopoly for their novelty slogans during the natural life cycle of trending expressions. Paying the trademark application fee is sufficient to guarantee the monopoly is in place for at least the first 5 years or so. If the trend dies, there’s no need to follow through on registration. The only reason to even bother with a specimen is if the trend continues or the slogan takes on a life of its own.

“No harm, no foul,” I imagine the applicant saying. But such marks do harm, and they are foul.

Later, I’ll point out some language in TMEP that should have made refusing the COLORED LIGHTS MATTER MERRY CHRISTMAS a no-brainer. But it’s rather obscure, so unless the examiner was sleeping with TMEP under his/her pillow, it’s no wonder they missed the two statements that prove ineligibility of this “mark.”

For now, let’s discuss more loopholes. This next one is the most troubling to me, because it’s the most difficult to prove. Unless an examiner is familiar with how trademarks are being abused in print-on-demand, they’ll likely approve a huge trademark “sword.”

And even if the examiner understands how trademarks are being abused in the print-on-demand industry, that’s no guarantee. Duty to acquit, remember? So let’s review another loophole: incomplete phrases.

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