Trademark System Bias


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TM System Bias, Part 11: Letter of Protest Fees

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Last updated on July 26th, 2020

[Update: 7/26/2020. USPTO emailed a response to this, which included a link to USPTO’s next step in the fees process. Somehow my attached PDF failed to send (probably oversized – even compressed it was over 3MB). Accordingly, I’m editing this into a plain text version to email, and will likely delete references to Dave and the attorney who was in favor of the fees.]

Well, this took about two and a half months longer than I thought it would.

In May I stumbled across an attorney letter supporting USPTO’s proposed fees for Letters of Protests. After I spent several days (or a week?) drafting a response, I decided it would be better to “throw up a few posts”… which turned into this series.

Today I finally mailed my letter to Commissioner Gooder. Even though it’s probably way too late. But just in case USPTO decides NOT to set fees this time, but maybe later, I thought it couldn’t hurt to send it. (I can’t find anything online about finalizing USPTO’s budget. But when I worked in DC way back in the dark ages, the fiscal year began sometime in July.)

(I decided against posting the annotated letters referenced below. I don’t think Dave would mind, but my annotated version of the attorney letter could cause grief or even damage a reputation, which is not my intent. Anyone can make a mistake (or even a bunch of mistakes!). It’s not my desire to embarrass or shame anyone, only to do what I can to stand up for the folks at Trademark Watch Dawgs and bring the new Commissioner up to speed on what’s been happening in print on demand.)

So, here’s the letter I sent explaining why it would be wrong for USPTO to charge a fee of any kind for filing a Letter of Protest. Sorry it’s so long. I’ve been trying to shorten it since May and I’m out of time.

From the Desk Of
Morgan S. Reece | @morganreecehq | www.SmarterJoy.com

July 21, 2020

David Gooder
Commissioner for Trademarks
PO Box 1451
Alexandria, VA 22313-1451

Transmitted via first class mail and email to: [email protected]; [email protected]; [email protected] 

Re: Proposed Fees to File Letters of Protest

To Whom It May Concern:

I write in response to the proposed Letter of Protest fees. 

Basis of Late Response

As a former admin of the Trademark Watch Dawgs group which Attorney ___________ misrepresented and maligned during the response period, I am compelled to present these facts for your consideration. An annotated copy of ________’s letter is attached. (For a reader-friendly version of the most important comments on _______’s letter, see attached excerpts from PART 07B: Why Attorneys Oppose Letters of Protest.) 

My basis for each objection is explained in the section that follows and supported by the attached documents and online blog posts from a series on my website, “Trademark System Bias.” Individual posts are referred to herein as “Part __” and a complete list of posts appears in the Appendix. 

Background

I am the daughter of a bankruptcy attorney, a former legal secretary, and one of several Trademark Watch Dawgs admins who worked with USPTO staff to develop a reliable, self-vetting system to provide USPTO with quality Letters of Protests while avoiding duplicates. (See Part 07A (online): Letter of Protest Implementation for details). 

Many of the points to be raised herein were already presented by Dave Cadoff, a current admin of Trademark Watch Dawgs. An annotated copy of Dave Cadoff’s letter is attached. 

Summary of Objections to Letter of Protest Fees

Adding a fee to the Letter of Protest is short-sighted, misguided, discriminatory, and immoral. 

Short-sighted: The increase in protests is a symptom of two bigger problems: a rapidly-growing source of ineligible applications and the current trademark system’s bias toward faulty registrations. Protest fees will sharply reduce or even eliminate protests, resulting in more faulty registrations and more Petitions to Cancel them.

Misguided: Contrary to Attorney _________’s assumption, the attorney requirement for applications does not “largely resolve” the issue of faulty registrations. On the contrary, it may result in a greater percentage of faulty registrations as savvy attorneys exploit known loopholes. Only protests provide industry-specific insight, saving examiners time, and supporting valid registrations. 

Discriminatory: Fees discriminate against small business owners’ ability to protect themselves from trademark overreach caused by USPTO’s faulty registrations.

Immoral: Fees punish the innocent and promote faulty registrations. Faulty registrations chill competition, hurt small businesses, and hamper our economy. Anything that increases the bias toward faulty registration is punitive and thus immoral.

Basis of Objections to Letter of Protest Fees

1. Protest Fees are Short-sighted

The increase in protests is a symptom of two bigger problems: a rapidly-growing source of ineligible applications and the current trademark system’s bias toward faulty registrations. Protest fees will sharply reduce or even eliminate protests, resulting in more faulty registrations and more Petitions to Cancel them.

1A. Growing Source of Ineligible Applications 

One might assume that ineligible applications affecting a single business owner are rare. 

This is not true in the print-on-demand industry, where scores of questionable applications may be filed in a single week

The print-on-demand industry is growing rapidly, as evidenced by the rising numbers of searches for “print on demand” and “merch by amazon” (Amazon’s print-on-demand platform). 

Searches for “Print on Demand” and “Merch By Amazon” are quickly rising on Google Trends

1B. Define: Print On Demand (“POD”)

Print on Demand (“POD”) is a subset of the global gifts, novelties, and souvenirs industry (which is expected to grow by over 16 billion dollars from 2019-2023). It includes self-publishing on Kindle Direct Publishing and other platforms.

The term “Print on Demand” reflects the supply chain’s flexibility that enables sellers to offer thousands of products for sale online without the need to create the product until a customer buys. POD products include T-shirts, jewelry, glassware, stickers, journals, socks, swimsuits, shower curtains, pencils, neon signs, and much more. 

Amazon is only one of many platforms used by POD creatives. The largest Facebook group for Merch By Amazon has over 75,000 members.

The largest Facebook Group for Merch By Amazon has over 75,000 members

In the print-on-demand industry 

  • There are tens of thousands of sellers (perhaps hundreds of thousands)
  • Sellers often produce dozens of “brands” and T-shirt slogans
  • Sellers often seek trademark registration for their most successful or potentially-successful “brands” and slogans based on bad attorney advice (see Part 05a online)
  • Any seller may thus generate dozens of ineligible applications and, often, faulty registrations (see Parts 5e and 5f online)

The possible “uptick in Letters of Protest” Ms. _______ refers to is not a result of protesters trying to bog down the system. It’s the natural result of offering POD sellers a way to protect themselves from the constant threat of faulty registrations. 

USPTO must understand these basics of the print-on-demand industry so leaders can develop effective strategies for combatting the growing number of frivolous trademark applications.

1C. Print On Demand Spawns Frivolous Trademarks

Success in the Print on Demand industry is largely dependent on observing trending expressions and generating fresh designs for them or variations of the phrase. This leads to multiple questionable trademark applications and registrations. 

Consider this list of registered trademarks in IC 025 (clothing): 

  • 86048573 I CAN’T KEEP CALM I’M GETTING MARRIED
  • 87314687 I CAN’T KEEP CALM I’M GOING TO BE
  • 86193612 I CAN’T KEEP CALM I’M HAVING A BABY
  • 86893705 I CAN’T KEEP CALM I’M THREE
  • 86553820 I CAN’T KEEP CALM I’M TWO
  • 86381353 I CAN’T KEEP CALM IT’S MY BIRTHDAY
  • 86366622 I CAN’T KEEP CALM SANTA’S COMING
  • 85346472 KEEP CALM AND ACK NICE
  • 86074953 KEEP CALM AND CHIVE ON
  • 86068193 KEEP CALM AND DRINK BEER
  • 86147887 KEEP CALM AND GO GREEN
  • 85733161 KEEP CALM AND HEAD UP NORTH
  • 87588175 KEEP CALM AND HEADBAND ON
  • 85787465 KEEP CALM AND LET ME DO YOUR MAKEUP
  • 85787983 KEEP CALM AND LET ME FIX YOUR HAIR
  • 86626134 KEEP CALM AND LET MIMI HANDLE IT
  • 86616473 KEEP CALM AND LET NANA HANDLE IT
  • 86608447 KEEP CALM AND LET PAPA HANDLE IT
  • 86580794 KEEP CALM AND LOVE
  • 86068163 KEEP CALM AND PLAY GOLF
  • 86592892 KEEP CALM AND SIMULATE
  • 86191458 KEEP CALM AND THINK PROM
  • 86548075 KEEP CALM AND WORK OUT
  • 86366622 I CAN’T KEEP CALM SANTA’S COMING

Each “KEEP CALM…” mark reflects a noble but misplaced attempt to “protect” new slogans for novelty products with trademark registration. This has been common practice in the novelty clothing industry for decades.

1D. Trademark System Bias Requires Multiple Protests

There are many reasons for the bias toward faulty registrations (often outside the control of USPTO) which I explore in my blog series, “Trademark System Bias.” Because of this bias toward faulty registrations, some applications will require duplicate protests, thus duplicate fees.

Over 50% of the twelve applications stopped by Trademark Watch Dawgs’ post-publication protests also received a pre-publication protest (see Part 07C online for complete list): 

  • AFFIRMATIONS (SN 87859333) – protested twice before publication
  • CHICKEN WHISPERER (87711946) 
  • FELIZ NAVIDOG (87649609) 
  • GIRLBOSS (SN 87959379) (Decision overturned after applicant appealed based on a non-precedent decision by TTAB) 
  • LITTLE SISTER (SN 87790714) 
  • MAMA BEAR (SN 88011770) 
  • UNICORN SQUAD (SN 87678692)

In other words, in half of these cases, an early protest was filed against an INELIGIBLE application but the examiner who reviewed the evidence did not grasp its significance and took no further action

(n.b. USPTO Advisors guided the current strategy: submit an early protest without exhausting the available evidence. Otherwise there will be nothing available for a post-publication protest if the examiner takes no further action.)

2. Fees are Misguided – Protests are Vital Since the Attorney Requirement Is Insufficient to Prevent Ineligible Applications

Contrary to Attorney _______’s assumption, the attorney requirement for applications does not “largely resolve” the issue of faulty registrations. On the contrary, it may result in a greater percentage of faulty registrations as savvy attorneys exploit known loopholes. Only protests can provide industry-specific insight, saving examiners time and supporting valid registrations. 

2A. USPTO needs more involvement with business owners, not less. 

In the year I worked with Trademark Watch Dawgs and shortly thereafter, USPTO accepted 169 Letters of Protest from group members, including 12 post-publication protests. Post-publication protests must prove Clear Error by USPTO. (See PART 07C online for a list of all 12 “Clear Errors” stopped by post-publication protests.)

Eight of these “Clear Errors” involved applications prepared by attorneys.

The attorney requirement is likely to increase the percentage of faulty registrations. Savvy attorneys, familiar with USPTO loopholes, exploit them regularly. See Parts 08B and 08C online for examples.

2B. Good Attorneys Make Mistakes

Even presumably competent and well-meaning attorneys like Ms. ________ may file ineligible applications without access to industry-specific insight. (See attached excerpts from SN _______________, an attorney-prepared application that the examiner refused due to its failure to function in spite of insistence to the contrary by the Applicant’s attorney.)

Likewise, USPTO staff are destined to make serious mistakes without access to industry-insider information. See Part 9a (online) -Protest Case Study of AFFIRMATIONS (SN 87859333), a generic term for which two pre-publication protests were ignored. A post-publication protest exposed USPTO’s Clear Error in approving this term for registration. (See also Dave Cadoff’s letter stating USPTO accepted 80% of Trademark Watch Dawgs’ protest submissions.)

More importantly, the AFFIRMATIONS case study reveals flaws in the current protest system.

2C. Letters of Protest Reduce Cancellation Costs

Petitions to Cancel have increased. Some of these are doubtless avoidable with the assistance of industry insiders who can alert USPTO to a term’s failure to function via the Letter of Protest. Again, see Part 9a (online) for an example of how difficult it is for examining attorneys to recognize and collect evidence to support refusal of ineligible terms, particularly descriptive marketing terms. 

See also excerpts from the COCKY Petition to Cancel in Part 8e (online). (Under current protest rules, a Letter of Protest could not have been accepted for this word which is a widely-used marketing term in the romance novel niche. Besides keeping protests free, USPTO should bring protest evidence standards in alignment with TMEP.)

3. Fees are Discriminatory

Fees discriminate against small business owners’ ability to protect themselves from faulty registrations and trademark overreach. 

I’M KIND OF A BIG DEAL (SN 87772719) is a widely-used phrase that would be owned today by Paramount Pictures except for the Letter of Protest process. (See attached excerpts from SN 87772719 refusal letter and TSDR document list.) 

An early protest with nine pages of evidence was ignored by the examiner.

A post-publication protest proved USPTO’s Clear Error because the phrase fails to function as a source indicator. It’s a widely-used expression that appears on novelty products with references to Santa Claus, bitcoin, Hercules (the Disney character), Elmo from Sesame Street, babies, and more.

And, notwithstanding Disney and Sesame Street, the vast majority of businesses that would have been harmed by this faulty registration are small businesses.

How many small businesses would have the guts and resources to face off with Paramount in court? 

4. Fees Of Any Size Are Offensive and Immoral

Charging protesters for the “privilege” of helping USPTO fulfill their goal of issuing valid registrations is punitive, discriminatory, and immoral.

In response to __________’s comments, any fee might be called “modest” by an attorney who can pass it on to their client. Such fees are not modest for thousands of small business owners struggling to survive against an onslaught of USPTO’s faulty registrations

Rather, they are an affront considering the hours of attorney time saved by protests that provide vital, relevant, industry-specific evidence of a term’s failure to function. 

The proposed Letter of Protest fees 

  • punish the innocent
  • benefit trademark bullies
  • promote faulty registrations

Faulty registrations are difficult to undo (“…registration instantly converts non-use or borderline use into a robust presumption of rights…” — Dr. Alexandra J. Roberts, Failure to Function (Iowa Law Review). (See Part 05b (online) and the attached letter from Dr. Roberts thanking me for my support of her project.)

Bottom line: Faulty registrations chill competition, hurt small businesses, and hamper our economy. Anything that promotes faulty registrations is thus immoral. 

A Better Plan

Balancing USPTO’s budget is a worthy goal. Rather than reducing protests via punitive fees for protesters, why not reduce ineligible applications while improving the protests they generate? 

Here are some ideas: 

  1. Create an internal “Wikipedia”-style reference/communication system for staff from USPTO and TM5 Partners to share insights gained about how some applicants are gaming the trademark / patent system; sort of like Intellipedia for Intellectual Property. (One foreign company, for example, holds over 80 frivolous trademark registrations at last count. Their business model appears to be helping others register T-shirt slogans and then license use of these popular phrases. This is a global issue.)
  2. Recognize/celebrate examiners who properly refuse applications that fail to function, and use these applications as training opportunities (via the “Wikipedia”-style site).
  3. Provide quarterly training for examiners to raise awareness of exploited loopholes.
  4. Hold workshops or masterclasses at PTO’s partner law schools, ABA conferences, and on PTO’s website that more clearly explain the purpose of trademark as it relates to print-on-demand and the novelty industry.
  5. Require owner acknowledgment of the limitations of trademark and the consequences of trademark overreach prior to final registration.
  6. Reach out to print on demand trade organizations to educate new business owners about proper use of trademark.
  7. Improve the user interface of the Letter of Protest form; include “merely informational” and “widely-used” legal basis options; add links to successful protests (or create fake protests) to show examples of proper evidence and proper presentation; provide an evidence checklist specific to print on demand classes; encourage a coordinated effort with industry trade organizations to avoid duplicate protests.
  8. Update Letter of Protest evidence standards to align with TMEP (see

Conclusion

Based on the reasons set forth above, the enclosed Attachments, and the Trademark System Bias blog posts listed in the Appendix, I implore you to keep the Letter of Protest free. 

Sincerely,


Morgan Reece

Enclosures

Attachments

  1. Annotated Letter from Attorney __________- dated September 30, 2019 – supporting the fees.
  2. Excerpt from blog series Part 07B: Why Attorneys Oppose Letters of Protest (reader-friendly version of my response to _________’s most egregious errors)
    https:www.smarterjoy.com/tm-bias-07b  
  3. Annotated letter from business owner Dave Cadoff dated September 30, 2019 – opposing the fees.
  4. Excerpts of USPTO refusal of ___________ (SN___________)
  5. Excerpts of USPTO refusal of I’M KIND OF A BIG DEAL (SN 87772719)
    http://tsdr.uspto.gov/documentviewer?caseId=sn87772719&docId=OOA20190716164815#docIndex=1&page=1 
  6. TSDR Document List for I’M KIND OF A BIG DEAL (SN 87772719)
    http://tsdr.uspto.gov/#caseNumber=87772719&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=documentSearch
  7. Letter to Morgan Reece from Dr. Alexandra J. Roberts, UNH School of Law

Appendix

Referenced blog posts come from the “Trademark System Bias” series at www.SmarterJoy.com. The blog post series is a work in progress. To read all posts in order,  click on the “Trademark System Bias” link in the website footer or go to www.SmarterJoy.com/topics/trademark-system-bias. (Blog post links follow the format: https://www.smarterjoy.com/tm-bias-01a)

  • TM System Bias, Part 01a: Introduction 
  • TM System Bias, Part 01b: A Trademark Tale
  • TM System Bias, Part 02: Definitions
  • TM System Bias, Part 03: Gaming the System
  • TM System Bias, Part 04a: Print on Demand
  • TM System Bias, Part 04b: Online Biz and Amazon
  • TM System Bias, Part 05a: Bad Trademark Advice
  • TM System Bias, Part 05b: Ornamental Refusals
  • TM System Bias, Part 05c: PTO’s Ornamental Advice
  • TM System Bias, Part 05d: Case Study: Life Is Good
  • TM System Bias, Part 05e: KEEP CALM & Consider Slogans
  • TM System Bias, Part 05f: Make Trademarks Great Again
  • TM System Bias, Part 05g: Attorneys are Human Too!
  • TM System Bias, Part 06a: USPTO’s POD Challenges
  • TM System Bias, Part 06b: TMEP’s Fuzzy Language
  • TM System Bias, Part 06c: More USPTO Challenges & Efforts
  • TM System Bias, Part 07b: Why Attorneys Oppose Letters of Protest
  • TM System Bias, Part 07c: Letters of Protest Results
  • TM System Bias, Part 08a: Specimens Loophole
  • TM System Bias, Part 08b: Intent To Use Loophole
  • TM System Bias, Part 08c: Incomplete Phrases Loophole
  • TM System Bias, Part 08d: Protest Challenges: Class 035 Relevancy Standards
  • TM System Bias, Part 08e: LOP Challenges: Relevancy Standards
  • TM System Bias, Part 08f: LOP Challenges: Arguments Definition
  • TM System Bias, Part 09a: AFFIRMATIONS Case Study
  • TM System Bias, Part 10a: The Halo Effect
  • TM System Bias, Part 10c: Halo Effect on I LOVE NY
  • TM System Bias, Part 12: a Proposed Strategy