Trademark System Bias


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TM System Bias, Part 10b: Halo Effect on GIRLBOSS

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

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Last updated on July 25th, 2020

This post examines how the Halo Effect leads to faulty registrations.

GIRLBOSS Gullibility: How One Bad TTAB Decision Leads to Another

Here’s why the RANDOM ACTS OF KINDNESS decision from Part 10a matters.

Even though it’s in a nice box at the top of the decision:

This Opinion is Not a
Precedent of the TTAB

TTAB’s wrong decision is already being used to force an even worse decision, one that will affect many, many business owners.

And it’s just the first of many dominos that will fall, because that’s how things go.

The First Effect of TTAB’s Wrong Decision: GIRLBOSS Refusal Reversed

One of the twelve marks that were published for opposition and then refused because of objective evidence received via protest was GIRLBOSS (SN 87959379).

Here’s a link to the GIRLBOSS refusal based on failure to function.

In the refusal, the examining attorney points out that

“this expression is commonly used to refer to a female’s mentality or state of mind and conveys the idea that a female is strong, motivated and able to accomplish goals without the help of others.”  

Following the initial pages of articles (LOTS of articles, all expressing the same cultural significance of the term as a reference to female empowerment) are product pages from the web. These include every sort of product imaginable:

  • “Girl Boss” T-shirts, sweatshirts, socks, swimsuits
  • Premium “Girlboss” wear from upscale online boutiques like na-kd (Sweden), A’Gaci (Los Angeles), and Toodles Noodles (New Zealand)
  • “Girl Boss” clothing from anchor stores like Dillard’s, Macy’s, JC Penney, Milly’s, Nordstrom’s, Walmart, and Lord & Taylor
  • Under Armour “Girl Boss” activewear for women and “Girl Boss” rompers for babies
  • Bergdorf Goodman offers a cashmere “Girlboss” sweater
  • There are products that use the term descriptively despite there being no “Girlboss” term displayed on them (makeup, jewelry, pants, blouse)
  • There’s “Girl Boss” elastic, jewelry, notebooks, wall prints, keyrings, drinkware, cell phone covers, napkins, pillows, desk signs, pencils, wall calendars, planners, neon signs, candles, paperweights, magnets, cutting board, shower curtains
  • There’s even “Girlboss” furniture – a chair displaying “Girlboss” on the back

How GIRLBOSS used TTAB to reverse a slam dunk refusal

I only learned about all this stuff because I wanted to document Letter of Protest results. When I checked on the applications that were refused after a post-publication protest, I saw that GIRLBOSS was Published again on January 14, 2020.

It turns out, the applicant’s attorney relied on the following arguments to overturn the refusal:

The GIRLBOSS Mark Can and Does Function as a Source Indicator. Applicant’s mark is a registered mark and is a coined phrase that functions as a source indicator.

A. GIRLBOSS is a federally registered trademark.

A recent case decided by [TTAB] is instructive…

The Board… held that RANDOM ACTS OF KINDNESS is capable of registration… relying almost entirely on the fact that the applicant already owned several registrations for the mark at issue.

GIRLBOSS Response to Refusal

MAY DAY! MAY DAY!
NON-PRECEDENT DECISION
BEING USED TO OVERRULE CASE LAW!

Sorry to interrupt the train of thought. It’s just that when somebody uses a non-precedential decision to trample a precedential decision, it’s worth pointing out.

Let’s take a second look at the case law cited in the RANDOM ACTS case. I think she forgot it.

Moreover, the incontestable registrations do not preclude the failure-to-function refusal because incontestability does not bar a finding that the applied-for mark is incapable of identifying source.  An incontestable registered mark cannot be challenged on the ground that the mark is merely descriptive. Park ‘N Fly v. Dollar Park & Fly, Inc., 469 U.S. 189, 224 USPQ 327 (1985). However, this does not extend to marks that are generic or otherwise do not function as trademarks or service marks. See In re Cordua Rests., Inc., 823 F.3d 594, 600, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016) 

RANDOM ACTS OF KINDNESS Examining Attorney Brief

For all you other non-legal-beagles out there, here’s what it means in Okie language:

Jus’ ’cause Y’all gotch-yo’self a trademark of sum term fo’ sum ‘nuther kind of product or service, don’t mean nut’in. Even if Y’all dun had that mark five long bless-ed YEARS and it’s “in-con-TEST-tea-ble,” my friend… ‘member, trademark law is industry-specific, fact-specific. Registration in one class don’t guarantee no registrations fo’ the same term in no other classes. No how, no way! In fact, if that silly ol’ term dun become generic or otherwise dun failed to function as a source IN-dee-KAY-tor, it might turn out Y’all’s “in-con-TEST-tea-ble” mark gonna be canceled for genericide in a hot Okie minute!

Sorry, sometimes I just have to let the Okie breathe a little Y’all.

Okay, back to the second reason her attorney thinks GIRLBOSS “Can and Does Function as a Source Indicator.”

Here it is (drum roll, please!):

B. The GIRLBOSS Mark is an established brand that exclusively calls to mind the Applicant.

So, are you saying that Under Armour, Dillard’s, Nordstrom, and all these other stores are knowingly selling counterfeit goods?

Say it isn’t so!

Registrability in One Class Does Not Prove Registrability in Every Class

Let’s recall the purpose of trademark: to indicate the source of the goods and services.

Are consumers buying “Girlboss” shirts, socks, swimsuits, pajamas, shower curtains, neon signs and more because they know, like, and trust the Girlboss “brand”?

Would they blame the Applicant if the quality isn’t up to par?

Isn’t it a little more likely they are buying it to express their enthusiasm for female empowerment and strong, motivated women? In fact, isn’t it a lot more likely?

My Informal Consumer Perception Test

Last night, my friend C. and I were in Walmart. In case you care, we’re both in our 50s. C. laughed with delight when she saw “Girl Boss” luggage tags.

“Who does that make you think of?” I asked.

C. looked puzzled by my stupid question, and blurted out, “ME!” (as in, “Duh! Who else?”).

I pressed on. “What about ___ (insert name of trademark owner)? Does it make you think of her?”

“Who’s THAT?” C. responded.

“Well, she started the brand. She had a TV show. Didn’t you ever hear of it?” (C. watches a lot of TV).

C. shook her head and tried to draw my attention to the Office Supplies nearby. It was clear she was getting tired of this conversation, so I dropped it. (Such is the life of a trademark nerd. Audience loss is frequent and brutal.)

Perception Vs. Reality

My little experiment illustrates a couple of truths many find hard to accept:

  • Popularity does not guarantee Consumer Perception as a source indicator (see notes about I’M KIND OF A BIG DEAL below)
  • Applicant’s Perception does not guarantee Consumer Perception (see the examiner’s refusal for reconsideration to register FUNCLE, SN 87412737, a case with very similar evidence of the term’s failure to function.)

It’s easy to understand why these applicants would assume everybody thinks of them when they see or hear “their” trademark. But it’s not true.

Case Study: I’M KIND OF A BIG DEAL

In their response to the examiner’s refusal of I’M KIND OF A BIG DEAL, the attorney for Paramount Pictures made several arguments similar to GIRLBOSS:

Applicant’s mark is a secondary source of origin

On what basis? (Paraphrasing here, to protect the applicant’s attorney from having their IP scraped. POD sellers aren’t the only ones who copy-paste excellent phrases. Y’all lawyers need to behave yourselves, ya hear? LOL.)

Here’s the gist of why Applicant thinks the mark is a secondary source indicator:

  • they’d used it on novelty goods since 2008
  • an iconic scene from the Anchorman movie made the phrase popular
  • the Anchorman movie was super popular, with domestic gross revenue over $85 million
  • the Facebook page for the movie has over 3 MILLION “Likes”
  • the phrase has taken on a life of its own as a slogan of the movie
  • because the movie was so popular, the phrase immediately brings it to mind
  • the specimen pictures the phrase with the title of the movie
  • lots of online sources connect the phrase with the movie
  • the phrase doesn’t just convey an ordinary slogan, it’s obviously a quote from the movie
  • consumers buy stuff with this phrase on it because they liked the movie so much (right about now, Paramount’s attorney must be gagging at this awful paraphrasing — the difference between his eloquent argument and my intentionally butchered version is like the difference between the King James Bible and Dr. Seuss… but there I go digressin’ again)
  • Lots of other movie slogans are trademarks

Wow! Pretty impressive list! But that’s not all. Applicant has another reason the examiner should change their mind.

The mark has *become* a trademark for the goods in question

“So, maybe it doesn’t automatically make people think of the movie by itself. But slap it on a novelty product with the movie title and folks will sure ’nuff think of the movie!” On what basis?

  • the movie’s still very popular
  • the mark is used on goods with the title of the movie
  • folks who talk about this phrase in the media always talk about the movie at the same time
  • the movie started out in 3000 theaters
  • it grossed over $210 million bucks!
  • it was nominated for lots of industry awards and even won some of them
  • it’s still playing on cable and people rent it on Amazon and iTunes
  • it’s made like $97 million bucks in home-media formats
  • did I mention the 3 million Facebook “Likes”?
  • the movie is so stinkin’ popular, and the quote so well-publicized, folks only associate it with the movie
  • when people see this phrase on novelty goods, they will immediately reckon Applicant to be the source of the goods

Wow! VERY IMPRESSIVE LIST! Seriously, it is. But wait, there’s more!

Ornamental use does not mean its “merely” ornamental

Y’all, this is a great point, and one that many creatives don’t get at first. Just because a term is being used to decorate a shirt, doesn’t mean it has to be refused for registration as “Merely Ornamental.” (The “merely” part of that phrase is legal-speak for “ONLY.”)

Think of a T-shirt with the words “JUST DO IT” across the chest. It’s ornamental, but it makes consumers think of Nike. It’s not “merely” ornamental. This is a great point.

Applicant’s Perception is Valid for them…

Hopefully Y’all can see, Paramount Pictures wasn’t trying to be a bully by filing this trademark application. They’ve got good reasons for believing the phrase instantly brings them to the average consumer’s mind. Now’s a good time to repeat one of my favorite quotes:

We see things not as they are, but as we are.

Somebody smart

Before I share some of the back story on this case, I think it’s also a good time for another famous quote.

God moves in a mysterious way,
    His wonders to perform…

God Moves in a Mysterious Way, hymn by William Cowper

Popularity and Applicant’s Perception Don’t Guarantee Consumer Perception

Let’s condense Applicant’s arguments in favor of I’M KIND OF A BIG DEAL down its core points:

  1. The phrase was used in an iconic scene of a movie
  2. The movie’s popularity made the phrase popular
  3. The movie was a box-office hit and is still popular 10 years later
  4. We’ve been using it on our goods for 12 years
  5. Lots of similar movie slogans are trademarks
  6. Just because it’s used ornamentally doesn’t disqualify it for trademark
  7. People buy stuff with this phrase on it for the movie’s sake – it immediately makes folks think of us!
  8. Lots of our fans and media sources would agree with us

See why they thought it should be their trademark? After all, seven of their eight core points are true! The trouble is, the one point that matters, isn’t true. I’ll prove it.

The World is a Big, Big Place

Per latest stats, there are 331 million people in America. So the 3M Facebook “Likes” represent a little less than 1% of the US population. If any of those “Likers” live in Canada or Europe, the percentage drops. A lot. How many of those other 328 million people would think of the Applicant if they saw this phrase on a novelty product? Especially if there was no picture or movie title with it?

A survey found, not many folks go to the theater. And even gross revenue isn’t an accurate measure of how many people even saw the movie. I’d never heard of it. And yes, I live in America.

Take a look at the post-publication protest evidence against I’M KIND OF A BIG DEAL. The phrase is associated with Hercules, Elmo, babies, Santa Claus, bitcoin, whales, and more. You get the idea. It doesn’t exclusively bring to mind the applicant.

Back to GIRLBOSS

What’s true for Anchorman is true for Girlboss. Just because lots of people saw and loved the movie/TV show, doesn’t mean everybody did. And just because people who saw the movie/TV show will probably think of the applicant when they see an iconic phrase or term from it doesn’t mean everybody will.

I have nothing against the GIRLBOSS Applicant. I’m always a little in awe of women who conquer the self-doubt that permeates our culture to do big things. But when people ignore reality and misuse the trademark system in order to gain a monopoly on what has become a generic term, that bothers me. And it should bother you, too.

The Journey to Genericide

Back to my favorite quote again:

“We see things not as they are but as we are.”

Somebody smart

Here’s what I think happened.

There was a TV show. It was popular. It came at during a perfect storm in our culture, a rising tide of feminism, girl empowerment, entrepreneurship, and hope. And the term Applicant “coined” became a synonym for “feminist,” “female entrepreneur,” and a rallying cry for girls and women to create power instead of cowering before it.

And, think about this “coined” term for a moment.

Does it not simply combine two known words to create a “new” word with an instantly-perceived definition?

GIRLBOSS is another word for female boss, female entrepreneur, female go-getter, feminist.

And “feminist” is not eligible (or “should not be eligible” – no telling if it’s been bagged by a troll without checking TESS) as a trademark for shirts because it’s a widely-used message. It conveys enthusiasm for a particular perspective or circumstance.

What’s so hard about seeing this?

Do y’all even buy T-shirts?

Generic Terms in Print On Demand

GIRLBOSS is easily a generic term for novelty products offered to consumers who support female empowerment much like AFFIRMATIONS is generic for jewelry, journals, and a whole slough of items bearing positive messages.

The only difference is that AFFIRMATIONS is generic because it is merely descriptive of messages on the goods. Whereas GIRLBOSS is generic because it describes the intended user.

The trouble is, generic (according to most trademark attorneys unfamiliar with the novelty goods industry, which includes, um, mostly everybody) is usually only thought to apply to terms like “shirt” for IC 025-shirts or “journal” for IC 016 journals. But this narrow definition isn’t accurate.

Here’s an example of a term that has nothing to do with describing the product yet it IS generic for certain products, including clothing:

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

In other words, MOUNTAIN CAMPER was found to be generic because it described the target audience of people who self-identified as mountain campers.

Similarly, OUTDOOR PRODUCTS was found to be generic for a class of goods worn and used by persons engaged in outdoor activities. (In re The Outdoor Recreation Grp., 81 USPQ2d 1392 (TTAB 2006), see TMEP 1209.01(c)(iii) Generic Matter: Case References).

In other words, if the “brand” describes

  • the product or type of product (the way OUTDOOR PRODUCTS describes products used outdoors, and the way AFFIRMATIONS describes products bearing positive messages)
  • the intended user (as MOUNTAIN CAMPER describes people who plan to camp in the mountains and as GIRLBOSS describes feminists and female entrepreneurs)

it cannot be a registered trademark. Otherwise, how will competitors be able to describe their products?

But this concept of generic-ness – while obvious to industry insiders – is outside the default definition of most trademark attorneys. This is an example of why it’s so hard to get USPTO to accept legitimate protests against certain terms in print-on-demand.

Talking strictly about novelty goods and apparel, GIRLBOSS is a user-identifying label. In the clothing industry, it functions exactly the same as MOM, DAD, UNCLE, FUNCLE, BOYMOM, PILOT, TEACHER, NASTY WOMAN, DOG MOM, AIR FORCE MOM… ad nauseum.

Which is to say, it does not function as a source indicator.

A Term Can Be Registrable in One Class, Generic in Others

Don’t hate me.

You know I’m right.

And I still love you.

Just like AFFIRMATIONS is descriptive for jewelry bearing an affirmational message, GIRLBOSS is descriptive of a certain mindset, a certain style of clothing, made popular by the TV show, and embraced as an identity among feminists. It’s genericide.

Is it a source identifier for the classes cited in applicant’s other registrations? Sure. Okay.

But I doubt it “exclusively calls to mind the Applicant” when it’s seen on a T-shirt or Journal. Maybe for her 1 million followers on social media. But for the other hundreds of millions of American buyers and billions of buyers globally?

Doubtful.

(I mentioned the “1 million followers” to my teens at dinner. They rolled their eyes. “Like, are you kidding Mom?” The YouTubers they follow have 24 million followers and more. Just sayin.)

TTAB Paves the Way for More Errors

I don’t care whether the GIRLBOSS mark is registered. I’d never buy or sell it, so I have no skin in this game.

What I find disturbing is that TTAB’s NON-PRECEDENT decision is being used to trample a case law caveat. A caveat that seems to have as its sole purpose protecting the integrity of the trademark system.

Fun Fact #1: RANDOM ACTS OF KINDNESS trademarks are in these classes:

  • 009-Downloadable educational materials
  • 016-Printed educational materials
  • 035-Website promoting good deeds
  • 041-Education and entertainment
  • 042-Online community

Most if not all of the applications mention “charitable deeds” or something along those lines. And as the examining attorney pointed out, “random acts of kindness” is a phrase that has long been used to refer to spontaneous charitable deeds.

Fun Fact #2: The other GIRLBOSS trademarks are in Class 9, 16, 35, 36, 41, 43, 45.

None of these are clothing, but actual trolls often start out in Classes 9 (apps, PopSockets), 16 (journals, planners), or 35 (online store), then branch out to 025 (clothing) once they’ve “proven” their mark functions as a trademark.

I’m NOT calling Applicant a troll. Only pointing out that, because of TTAB’s RANDOM ACTS OF KINDNESS decision and GIRLBOSS, the path to easily gaining faulty registrations just became a 6-lane freeway.

TTAB’s Decision Promotes Standard Trolling Practice

TTAB’s decision is basically a blank check, endorsing a common trademark troll practice and welcoming more of it:

  • Get a trademark registration in a “fringe” class, like 009 (iPhone apps, and, conveniently, PopSockets) or 035 (online stores).
  • Wait six-twelve months, and apply to register the term in 025 (or in 009 PopSockets, if you were cautious and just started off with 009 cell phone apps, in which case you’ll easily get a class 025 registration in another six months)

Why does this work so well? Because most creatives aren’t even aware of the 009 trademark application, so it goes through without a protest. And once the 009 registration is in hand, USPTO is more likely to grant the 025 registration even if a protest is filed. After all, the previous registration proves it functions as a trademark, right? The alternative is to say a term fails to function for clothing but does function for iPhone apps and PopSockets, or cancel class 009 registration.

So what (most likely) happens next?

The owner of two faulty registrations swings them around like Red Lawson does his guns, makin’ sure everybody knows who’s boss. (Skip ahead to 20:15 to hear what I mean.)

Unless some hero comes to the rescue, creatives will keep being bullied and their businesses slaughtered by trademark bullies like Red Lawson.

You see how it is.

This is Part 10b of a 12-part series about the threat and impact of questionable trademarks. The next post is Part 10c. Or see below for a complete list: