Trademark System Bias


Welcome to a series about the threat and impact of questionable trademarks.
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TM System Bias, Part 08c: Incomplete Phrases Loophole

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Last updated on July 17th, 2020

In this post, you’ll learn about registration loopholes created by the Trademark Manual for Examining Procedures.

Faulty registrations happen because our system is biased in favor of them in many ways. Perhaps the biggest source of bias toward faulty trademark registrations is the loophole that allows easy registration of incomplete phrases.

Loophole 3: Incomplete Phrases

Here’s another type of questionable mark. The only difference being, these open-ended statements (randomly selected per the disclaimer at the top of each post in this series) are registered trademarks that someone is using to “protect” an idea and avoid competition:

  • 86630783 ALWAYS BE YOURSELF UNLESS YOU CAN BE A (unicorn, mermaid, etc.)
  • 86557122 ASK ME ABOUT MY (grandkids, awesome daughter, baby pug, etc.)
  • 87269271 CHEAPER THAN THERAPY (wine is, running is, tacos are, etc.)
  • 86557154 CRAWL, WALK,… (Fish/golf/hockey/surf; baby shirts)
  • 86557157 GRANDPA SINCE (2010, 2011, etc.)
  • 87070847 GREETINGS FROM (Alaska, etc.; souvenir shirts)
  • 86419264 I LOVE IT WHEN MY WIFE (lets me fish, golf, etc.)
  • 86180548 I LOVE IT WHEN MY WIFE (lets me fish, golf, etc.)
  • 87554264 I’M DIGGING (being 4, 5, 6, 7)
  • 87396302 LEGENDS ARE BORN (in October, in 1957, etc.)
  • 86557171 MY HEART BELONGS TO (my husband, my horse, Texas, etc.)
  • 86557180 REAL WOMEN (love cats, eat chocolate, lift weights, etc.)
  • 86557184 THIS DUDE (loves pizza, just turned 18, drives fast cars, etc.)
  • 85674407 THIS GUY (loves pizza, just turned 18, drives fast cars, etc.)
  • 86341905 THIS MAN (loves pizza, just turned 18, drives fast cars, etc.)
  • 86557191 THIS IS WHAT THE WORLD’S GREATEST… …LOOKS LIKE (mom, dad, grandma, etc.)
  • 86231076 WHEN I’M BIG (I’m going to be a doctor, lawyer, etc.)
  • 86339336 WORLD’S OKAYEST (mom, dad, etc.)
  • 86330807 YOU CAN’T SCARE ME (I’m a scientist/dad/mom/teacher, etc.; this is from Raiders of the Lost Ark)

I know, I know.

An IP infringement claim against anyone using these phrases in a T-shirt design wouldn’t hold up in court.

It doesn’t have to. The registration is sufficient to eliminate most competition.

The worst part is, TMEP and case law are of little help.

The Trouble with Phrases

The trouble with “partial expression” phrases is these “qualify” as trademarks in print-on-demand. Not so in other industries like supermarkets (see below). There’s a lamentable disconnect in Tammy TMEP between the intent of the Merely Informational refusal basis and its application to the novelty industry.

It doesn’t matter if industry insiders recognize these phrases as key elements of novelty expressions. In Part 6b I explained how Tammy TMEP’s Merely Informational Bullets leave a lot of wiggle room for novelty slogans to become registered trademarks.

If a pre-publication protest fails or is not even filed, a post-publication protest has no chance of succeeding against “trademarks” like these. That’s because unless novelty products bearing the exact phrase already exist, a post-publication protest will be refused. (The COLORED LIGHTS MATTER MERRY CHRISTMAS application discussed in Part 8b was the first to expose this system flaw.)

Many of these phrases don’t make sense until you see the complete expression decorating a T-shirt, hat, coffee mug, journal, keychain, decal, wall art, or other product.

Worse, there are no competing products bearing the exact “partial expression” phrase, because without the full expression the phrase doesn’t make sense.

A pre-publication protest is unlikely to help. After all, examiners understand the owner’s rights do not extend to fair use of the phrase on other products. And they are duty-bound to presume the owner would treat competitors fairly.

But the sad fact remains, the registration is sufficient to eliminate most competition.

To quote my favorite book ever,

My brethren, these things ought not so to be.

James 3:10, KJV

A Possible Solution

The best solution to this loophole may be for Tammy TMEP to provide an additional paragraph in the Merely Informational Matter section. Something that connects these highlighted dots:

In support of the refusal or disclaimer requirement, the examining attorney must explain the basis for the refusal and provide evidence that the matter would not be perceived as a trademark or service mark that indicates a particular source of goods or services. This support may include evidence of decorative or informational use by applicant or other manufacturers on goods of a similar nature, or evidence of frequent use by others in connection with the sale of their own goods or services. See, e.g.D.C. One Wholesaler, Inc., 120 USPQ2d at 1716 (noting that “the marketplace is awash in products that display the term I ♥ DC as a prominent ornamental feature of such goods, in such a way that the display itself is an important component of the product and customers purchase the product precisely because it is ornamented with a display of the term in an informational manner, not associated with a particular source“); In re Eagle Crest, Inc., 96 USPQ2d at 1230 (noting that, because consumers would be accustomed to seeing the phrase ONCE A MARINE, ALWAYS A MARINE “displayed on clothing items from many different sources, they could not view the slogan as a trademark indicating source of the clothing only in applicant”); In re C.R. Anthony Co., 3 USPQ2d 1894, 1895 (TTAB 1987) (noting that “in every exhibit submitted by applicant to illustrate use of ‘PART OF THE BARGAIN’, that four-word phrase, whether written small or large, forms part of a longer sentence or phrase“); In re Wakefern Food Corp., 222 USPQ 76, 78 (TTAB 1984) (finding WHY PAY MORE! to be a common advertising slogan across a wide variety of goods and services and thus it failed to function as a service mark for supermarket services, relying on specimens that showed use of the slogan in phrases such as “Why pay more for groceries?” and “More meat for less. Why Pay More?”). [Emphasis added.]

TMEP §1202.04 Merely Informational Matter

Here’s a simplified version, with only the highlighted text:

..matter would not be perceived as a trademark [based on] evidence of decorative or informational useon goods of a similar naturecustomers purchase the product precisely because it is ornamented with a display of the term in an informational manner, not associated with a particular source in every exhibit submitted by applicant to illustrate use of [the term] that four-word phrase, whether written small or large, forms part of a longer sentence or phrase…[mark was found] to be a common… slogan across a wide variety of goods… and thus it failed to function… relying on specimens that showed use of the slogan in [longer] phrases . [Emphasis added.]

How I wish I were smart enough to draft such a paragraph. And that someone of influence might persuade USPTO to include it in their manual.

For now, this loophole remains.

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