Trademark System Bias


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TM System Bias, Part 08f: LOP Challenges: Arguments Definition

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Last updated on July 17th, 2020

This post explores how USPTO’s overly-broad definition of “argument” leads to the rejection of relevant evidence and needless errors by examiners. It also connects the dots between the Lanham’s Act obvious intent, case law, and the registrability of novelty phrases and marketing keywords. (This post is part of a 12-part series about the threat and impact of questionable trademarks. Scroll to the bottom for an ordered list of posts.)

Challenge #3: No “Arguments” Allowed

The Letter of Protest form does not allow any input that might be construed as a legal argument. This means protesters cannot highlight specific text in the TMEP.

A salient quote from TMEP might help the Attorney Advisor recognize the relevancy of the protest evidence. But when the evidence is forwarded to the examining attorney, only the Legal Basis is included in the cover memo.

Example: AFFIRMATIONS post-publication protest

The Legal Basis for the post-publication protest of AFFIRMATIONS was

Merely descriptive: – of a genus of goods (affirmation jewelry, affirmation drinkware, affirmation books, calendars, stickers, etc.); – of the types of messages displayed on applicant’s goods; – term is needed by others who use the mark when advertising or describing their own products. See TMEP 1209, 1209.01(b), 1209.02(a), 1209.03(b), 1209.03(v).

These specific sections of TMEP were cited because each one contains language we hoped might help Attorney Advisors recognize the relevancy of the evidence (since AFFIRMATIONS is never used to adorn products and experience had shown a Merely Informational basis would be rejected).

But what went to the examiner was 

Merely descriptive under Section 2(e)(1)

AFFIRMATIONS post-publication protest memo to examiner

Why Highlighting Specific Sections of TMEP Might Be Helpful

Granted, when a post-publication protest is accepted, the examiner is basically being told, “You made a mistake, please fix it.” So one could argue the consolidation into the “parent” legal basis is irrelevant. 

But what this means is that protesters are unable to tip off examiners to specific yet obscure text relevant to the registrability of an application. 

Obscure Case References are Ignored

For example, two cases – each cited exactly one time in all of TMEP – provide strong support for inclusion of a “Merely Descriptive” refusal of applications for user-identifying terms and niche-specific keywords (like the COCKY example in Part 8e). But these cases are hidden deep within TMEP: 

Significance of “Intended Users” Language

The language about intended users is instructive. Let’s take a look:

A term that identifies a group to whom the applicant directs its goods or services is merely descriptive. See… In re Camel Mfg. Co., Inc.,222 USPQ 1031 (TTAB 1984) (MOUNTAIN CAMPER held merely descriptive of retail mail-order services in the field of outdoor equipment and apparel).

TMEP 1209.03(i) Intended Users

Yet it’s doubtful the examiner will consider intended users when reviewing a protest. Because even if this information is included in the Legal Basis for the protest, it won’t be included in the memo the examiner receives with the evidence. 

Either of these references will likely be reduced to “merely descriptive” or “generic.”

Why the Legal Basis Matters

These small changes matter because they mistakenly point examiners to overly-broad default definitions while hiding laser-focused case law like needles in haystacks.

Allowing protesters to highlight subsections of TMEP might help examiners connect the dots a little better between the Lanham’s Act obvious intent, case law, and the registrability of novelty phrases and marketing keywords.

Descriptiveness Definitions

Default definitions often don’t apply to words that decorate novelty products. And the lack of an obvious connection between the prospective trademark and the legal basis for refusal means examiners are tasked with research that would be unnecessary with a tweak to protest rules. 

TMEP’s Descriptive Examples include 

  • NOPALEA (dietary and nutritional supplements)
  • APPLE PIE (potpourri)
  • BED & BREAKFAST REGISTRY (lodging reservations services)
  • MALE-P.A.P. TEST (testing services for detecting and monitoring prostatic cancer)
  • CHAMBERED PIPE
  • REGISTRY OF MEDICAL PATHOLOGISTS ([services related to] providing a registry of medical pathologists)
  • NATIONAL CHAMBER ([services similar to] traditional chambers of commerce activities)

But these aren’t the only examples of descriptive terms in TMEP. They’re the most obvious ones, and they lead to an inaccurate default definition. 

Default Descriptive Examples

Ask your favorite attorney to list five common descriptive terms for T-shirts. Here’s the sort of list you’ll probably get: 

  • Tactile feel (comfortable, smooth, silky, soft, thick)
  • Appearance (V-neck, crew neck, black, tie-dye)
  • Garment Care (wrinkle resistant, fast-drying)
  • Quality (ultra-durable)
  • Embellishments (pocket, lace sleeves)

Yet per the examples of MOUNTAIN CAMPER and OUTDOOR PRODUCTS, these are not the only types of descriptive terms that apply.

It’s not that attorneys are stupid. They’re just defaulting to examples that easily fit TMEP’s definition: 

A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. 

Merely Informational Product Features Examples

Product features are also mentioned in TMEP’s Merely Informational section.

supporting evidence may include materials… showing the wording listed with other features of the goods/services…

TMEP 1202.04(a) General Information about the Goods or Services

So how about letting your attorney friend list informational-type features of T-shirts? Here’s the sort of list you’ll probably get: 

  • Fabric Type (100% cotton, etc.)
  • Construction (Double-stitched seams, hand made, etc.)
  • Quality (Well-crafted)
  • Sizing (Perfectly sized)
  • Source/Country of Origin (Ethically-sourced, Made in America)

But these are not the only kind of features mentioned in Tammy TMEP’s Informational Matter section.

Words Can Be Features, Too

According to TMEP 1202.04:

“the marketplace is awash in products that display the term I ♥ DC as a prominent ornamental feature of such goods” [emphasis added]

TMEP 1202.04 Informational Matter

Yes, a novelty slogan is also a feature. The difference is, it’s an ornamental feature. 

And one can accurately classify some ornamental features as being descriptive of the intended user just like MOUNTAIN CAMPER was.

It’s not much of a stretch, then, to say that a second legal basis of refusal should be added to informational messages that double as user-identifying labels: 

Merely Descriptive of Intended Users

User-Identifying Labels are Descriptive

So now imagine you submit protest evidence based on some user-identifying mark being descriptive. (If you can’t think of one, hang tight, I’ll share a sample list in a minute.)

“Silly protester!” I imagine some attorney advisor sighing. “Words like these don’t describe clothing!”

Oops. Yes, they do. But only if you dig into TMEP 1209.03(i)… let’s see, a, b, c, d, e, f, g, h, i… nine levels down from the main “Descriptive” entry. That’s where we learn MOUNTAIN CAMPER (for outdoor equipment and apparel) is Merely Descriptive of Intended Users.

But even if you include a reference to TMEP 1209.03(i) on the protest, the examiner will never see it.

Newly-coined descriptive terms are not registrable

Comments from TMEP’s Descriptive section regarding newly coined descriptive terms leave a great big question mark over applications for newly coined user-identifying labels: 

trademark law does not countenance someone obtaining “a complete monopoly on use of a descriptive term simply by grabbing it first”

“Even novel ways of referring to a product may nonetheless be merely descriptive.”

“The fact that appellant may have been the first and only one to adopt and use the mark sought to be registered does not prove that the mark is not descriptive . . . .”

When a term consists of a compound word or a telescoped word, the examining attorney may establish that the term is generic by producing evidence that each of the constituent words is itself generic, and that the separate words retain their generic significance when joined to form the compound or telescoped word that has “a meaning identical to the meaning common usage would ascribe to those words as a compound.”

Let’s consider why and how USPTO should apply these principles in the print-on-demand industry.

Ornamental Features Matter

Not all ornamental features are created equal. Consumers demand not only an aesthetically-pleasing design but also a well-turned phrase.

Trademark registration of slogans and marketing keywords force competitors to create alternative expressions or pivot into other niches. This becomes especially challenging when the phrase describes the intended user using common terms or “newly-coined” telescoped terms.

Here are some examples (lest you think these cautious alternatives are unnecessary, note that Amazon or Etsy sellers of shirts bearing “Boy Mama” “Mom of Boys” and “Mama of Boys” “Baseball Mama” and so on risk IP infringement claims and loss of their accounts): 

TrademarkNon-Infringing Alternative Design
BASEBALL MOM (SN 86366904)FEMALE PARENT OF ONE OR MORE SPORTS ENTHUSIASTS DEVOTED TO STRIKING SPHERICAL OBJECTS WITH LONG NARROW CLUBS
BOYMOM (SN 77132981)FEMALE PARENT OF MALE OFFSPRING
COUNTRYHOLIC (SN 87790670)ENTHUSIASTIC DEVOTEE OF OPEN AREAS WITH FEW BUILDINGS OR PEOPLE
FOOTBALL MOM (SN 86366912)FEMALE PARENT OF A SPORTS ENTHUSIAST DEVOTED TO ANY OF VARIOUS GAMES PLAYED WITH OBJECTS OF A SPHERICAL OR PROLATE SPHERICAL SHAPE IN WHICH TWO TEAMS COMPETE TO KICK, HEAD, OR PROPEL THE SHAPE INTO EACH OTHER’S GOAL
GIRLBOSS (SN 87959379)EMPOWERED AND DETERMINED YOUNG FEMALE or FEMALE ENTREPRENEUR or YOUNG FEMINIST
I’M THE BIG SISTER (SN 75254354)MY FAMILIAL POSITION IS THAT OF THE OLDER FEMALE OFFSPRING
MERMAID OFF-DUTY (SN 87398315)MYTHICAL ALLURING SEA CREATURE AVAILABLE FOR HUMAN INTERACTION
MOMMY TO BE (SN 87093439)FUTURE FEMALE PARENT
NAUTI BRIDE (SN 87463184)PUN-LOVING SEAFARING NEWLY-WEDDED FEMALE MARRIAGE PARTNER
SOFTBALL MOM (SN 86366840)FEMALE PARENT OF A SPORTS ENTHUSIAST DEVOTED TO STRIKING CUSHIONED SPHERICAL OBJECTS WITH LONG NARROW CLUBS
SOMEBUNNY IS PREGNANT (SN 87816136)PUN-LOVING INDIVIDUAL CONFIRMS FERTILITY CONCURRENTLY WITH ACKNOWLEDGEMENT OF THE IMPENDING EASTER HOLIDAY
THE BEST KIND OF DAD (SN 87169052)MALE PARENT, SUPERLATIVE TYPE
“Non-infringing” Alternatives to User-Identifying Labels Registered for Clothing

Such trademarks obviously harm competitors. They seem destined for genericide from the start. Yet they continue to register – “first come, first served” – without any apparent consideration of consumer perception or the chilling effect such marks have on the industry.

Default Generic Examples

In similar fashion to the default “descriptive” examples, “generic” is usually thought of as something like “BIKE” for bicycles, “SHIRT” for shirts, and so on. This isn’t exactly correct, but don’t blame the attorneys. Here’s the first line of the Generic section of TMEP 1209.01(c): 

Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services.

TMEP 1209.01(c) Generic

The test for whether a term is generic further cements the default definition:

A mark is generic if its primary significance to the relevant public is the class or category of goods or services on or in connection with which it is used.

1209.01(c)(i) Test

This is why most attorneys, if asked to provide examples of generic terms that apply to novelty products, would offer suggestions like:

  • shirt
  • hat
  • book
  • pencil

Getting them to see things “outside the box” of the default definition is pretty tough.

Alternative Generic Examples

So “outdoor products” isn’t generic for clothing, is it? 

Oops again! Yes, it is. It’s generic for a class of goods worn and used by persons engaged in outdoor activities, 1209.01(c)(iii)Generic Matter: Case References)

But an examiner would have to sift through mounds of other case references to find this gem of wisdom. 

What sorts of marks might be “generic for a class of goods worn and used by persons engaged in” other specific activities? I’m glad you asked.

TrademarkActivity
BEACH HAIR DON’T CARE (SN 86963823)persons engaged in beach activities
EVERYTHING OFFENDS ME (SN 87777791)persons engaged in undesired social activities
FEED ME TACOS (SN 87823745)persons engaged in social activities around Mexican food
I ONLY MAKE BOYS (SN 87176005)persons engaged in birth-annoucement activities
I’D RATHER BE WITH MY DOG (SN 86096269)persons engaged in undesired social activities
LET’S GET SHAMROCKED (SN 87577278)persons engaged in St. Patrick’s Day activities
LIFE IS BETTER AT THE CAMPGROUNDpersons engaged in camping activities
SOMEBUNNY IS PREGNANT (SN 87816136)persons engaged in birth-annoucement activities
Generic Clothing Trademarks

Lighten up, people. I’m not serious (this time). Just wanted to throw a little levity in.

Needles in Haystacks

Let’s get back to the actual case law example of MOUNTAIN CAMPER.

What are the chances of finding the 17 out of 2014 words of Generic case references that reference apparel? The only other case that includes products related to print-on-demand is RUSSIANART (generic for dealership services in the field of fine art, antiques, furniture, and jewelry).

Although it includes an apparel example, the MOUNTAIN CAMPER example of a merely descriptive term is unlikely to help a Letter of Protest. The same thing goes for the OUTDOOR PRODUCTS generic case law example. 

Why? Simple: 

Including TMEP subsections or citing case law amounts to presenting a legal argument! This is inappropriate for ex parte examination! Can’t you guys read?

If the tag is there and the market isn’t flooded with the same exact expression, the examiner is unlikely to recognize how registration will harm competitors. And protest evidence is unlikely to reach them. 

The examining attorney’s approval will not be overturned without a clear error, Y’all.

The approval will stand. And just like in my epic poem, the ocean (marketplace) will turn red.

A Dreamy Solution

In a perfect world, the following quote (mostly excerpted from TMEP) would find its way into the review of every application that affects print-on-demand: 

Derivatives or variations of widely used messages (including marketing terms) also fail to function as marks if they convey the same or similar type of information or sentiment as the original wording… Any evidence demonstrating that the public would perceive the wording merely as conveying the ordinary meaning of the message, or enthusiasm for, affinity with, or endorsement of the message, supports this refusal. [Words in bold added.]

TMEP 1202.04 Informational Matter

For now, the best option that exists is the trademark Letter of Protest.

In the next post, we’ll explore a real-life case study of how USPTO systemic bias nearly led to trademark registration of a generic term.

This is Part 8f of a 12-part series about the threat and impact of questionable trademarks. The other posts are linked below:

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