Last updated on July 21st, 2020
Learn how overly-strict “Merely Informational” protest evidence relevancy standards bias USPTO toward faulty trademark registrations.
Challenge #2: Relevancy Standards for Merely Informational Matter
If you’ve read the other posts in this series, you know the typical definition of “informational” is something along the lines of “descriptive of the materials used to make the product.”
TMEP says it like this:
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 messageTMEP 1202.04 Informational Matter
Tammy TMEP includes a lot of “merely informational” language. But as we already noticed in Part 6b, her bullets indicate it’s not “informational” if it doesn’t say anything about the materials used to create the product. And it’s not “widely used” until scores of alternative designs for the same phrase are marketed by others.
Default Informational Definition
Thus examiners may default to thinking “informational” as applied to novelty goods only applies to words like “100% cotton” for shirts, “stainless steel” for travel mugs, or already widely-used messages like “I♥ DC”.
As you’ll soon see, this overly-strict definition isn’t true. And it leads to faulty refusals of protests.
In Part 6a I likened the examiner’s role to a court-appointed defense attorney. They must presume innocent intentions for the applicant, and do all they can to acquit. Attorney Advisors are in a similar circumstance.
When Attorney Advisors review protest evidence for relevancy to TMEP’s Merely Informational language, the greatest emphasis seems to be on this phrase from TMEP 1202.04(b) Widely Used Messages:
I ♥ DC failed to function as a mark for clothing items [because] the wording “has been widely used, over a long period of time and by a large number of merchandisers”
This explains why a post-publication Letter of Protest must include evidence of
- many types of products
- decorated with the same expression
- offered by many different sellers
- on a variety of platforms
Yet, this is not the actual standard set by TMEP. And never mind consumer perception and common sense.
Similar Expressions are Often Ignored
The following key point is largely ignored when USPTO examines applications in the typical print-on-demand classes:
…the informational significance of I ♥ DC was “reinforced by the fact that similar expressions in the form of ‘I ♥__’ have also been widely used to express such enthusiasms with respect to other places and things.TMEP 1202.04(b) Widely Used Messages
Yes, Tammy TMEP says a T-shirt slogan has “informational significance.” And she says right there, “similar expressions” that “express enthusiasm” are not registrable.
But even including this quote in the protest form’s Legal Basis text box is unlikely to get a post-publication protest accepted by Attorney Advisors if exact-match evidence doesn’t exist.
“If it isn’t a slam dunk, the post-publication protest will be denied.”
Some attorneys get it. (Kudos to USPTO attorney who had the wherewithal to refuse an application to register #MAGICNUMBER108 in spite of the “not yet widely used in commerce” loophole.) But such decisions are the exception, not the norm.
Instead, consumer perception is seemingly ignored. All. The. Time.
But that’s not all.
Marketing Use is Consistently Ignored
The story about the petition to cancel the trademark registration of COCKY for books illustrates how silly this myopic standard for “Merely Informational” protest evidence relevancy is.
The question before the board in the COCKY case was whether a single word excerpted from a series of titles is eligible for a trademark. The use of “cocky” to market romance novels was articulated in the petitioner’s brief. Here are some favorite quotes:
The word “cocky” as used in the title to a romance novel cannot be trademarked because it is generic and descriptive. Romance novels frequently involve “alpha males” as their protagonists—and those alpha males are often described in the titles to the works using adjectives such as “cocky,” “confident,” “arrogant,” and many others.
Such generic terms cannot be subject to a trademark. The word “cocky” itself— standing on its own—is a mere adjective, a word that has long been in use in the industry in titles, covers, keywords, advertising, and book descriptions to describe the “alpha male” characters frequently encountered in romance novels.
Indeed, a short perusal of the search results of Amazon.com for romance novels reveals a litany of titles promising “cocky” cowboys, stepbrothers, executives, werewolves, sheiks, sports stars, royalty, and nearly every conceivable combination thereof. Many if not most of these novels predate Registrant’s claim, and many are book series which use “cocky” as a descriptor in their series names.COCKY (SN 87604348) Petition to Cancel
Could this Petition to Cancel have been avoided?
Under the current flawed protest evidence standards, no. Few (perhaps none) of the books affected by “COCKY’ have a one-word title. Even a pre-publication protest against the COCKY application would likely have been denied. (It shouldn’t be this way.)
The “exact match required” Letter of Protest evidence standard paves the way for faulty registrations which will later clutter up TTAB with easily-avoidable Petitions to Cancel.
Example: AFFIRMATIONS pre-publication protest
The Legal Basis for the pre-publication protest of AFFIRMATIONS (SN 87859333) was
Mark is generic. Mark is merely descriptive or misdescriptive, or should have an element disclaimed on that basis. Mark is informational under TMEP 1202.04 and fails to function as a trademark.
But the memo forwarding the protest evidence to the examiner cited this reason:
The “informational” legal basis was omitted, presumably because none of the products displayed the word AFFIRMATIONS on them. Yet the examiner’s final refusal rightly includes the Merely Informational legal basis, even though the post-publication protest did not include it.
Why the change? Because the protest evidence shows scores of product pages in which sellers included “affirmations” in the product title and/or description. In other words, this descriptive word is also a widely used marketing term.
Widely-Used Marketing Terms Fail to Function
Just as “WHY PAY MORE” is used as a marketing slogan for supermarkets, “COCKY” is used to market romance novels, and “AFFIRMATIONS” is used to market all manner of novelty goods. These terms all fail to function as source indicators under the “Merely Informational” legal basis.
Yet when it comes to connecting the dots and applying case law to print-on-demand, let’s just say we have a communication problem.
Recent TTAB cases are of no help at all. (More on this later.) Sometimes it seems like excessive legal analysis (as opposed to common sense) has rendered the Trademark Act powerless to do its intended job.
And Examiners and Attorney Advisors have too much integrity to act on the spirit of Lanham when case law is unclear. When in doubt, they must err on the side of the applicant. Duty to acquit.
Overly-Strict Evidence Standards Lead to Errors
Evidence supporting a pre-publication protest must overcome the same “exact match” hurdle, only the amount of evidence required is less.
This means if the evidence only shows a word/phrase is
- a derivative of other similar novelty expressions
- a commonly-used marketing term for a niche of T-shirts, stamped jewelry, or kindle books
it’s unlikely the examiner will ever see it.
And that’s why overly-strict protest evidence standards lead to examiner errors.
Relevant Evidence is Refused
Bottom line: some relevant evidence never sees the light of day.
- Examiners never see evidence from protests that are denied because of the overly-strict evidence standard requiring “exact match” phrases
- Evidence of similar slogans is ignored
- The strong connection between Class 035 and scores of potential physical novelty products is unrecognized or disregarded
- Evidence of marketing use is ignored
Thus novelty slogans that would not qualify for copyright protection are regularly granted trademark registration.
But even if such evidence is accepted, examiners may miss its significance. That’s because protesters are not allowed to help examiners see beyond their default definitions.
This is Part 8e of a 12-part series about the threat and impact of questionable trademarks. The next post is Part 8f. Or see below for a complete list: