Trademark System Bias


Welcome to a series about the threat and impact of questionable trademarks.
Scroll to the bottom for an ordered list of posts, or go to the Index.

TM System Bias, Part 12: a Proposed Strategy

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

Warning! This is a draft, not a finalized post. See full draft disclosure. When relevant, posts are sponsored or contain affiliate links. Read More

Last updated on July 17th, 2020

This post offers a strategy that expands on USPTO’s efforts to curb questionable trademarks in the print-on-demand industry.

USPTO’s System Bias Towards Frivolous Trademarks

USPTO’s system is biased in favor of granting ineligible and potentially-overreaching trademarks. The loopholes are many, and USPTO attorney’s hands are often “tied” by silence in the case law. The top priority is speedy registration. Meanwhile, the system is exploited to unfair advantage in the marketplace. Let’s review:

  • USPTO’s manual offers limited case law examples to apply to print on demand.
  • The language is sometimes vague in ways that restrict common sense. This leaves attorneys unable to refuse an application when the evidence doesn’t fit squarely within the box created by TMEP.
  • Valid registrations lead to faulty registrations through the halo effect.
  • Loopholes and Letter of Protest inadequacies lead to more faulty registrations.

As if all this weren’t enough, USPTO also tends to assign the same examining attorneys to repeat applicants. So the halo effect sort of works double-time: once by virtue of previous registrations, and again by virtue of the same attorney being assigned to review another application from the same owner.

A Proposed Strategy for Minimizing Frivolous Trademarks

Avoiding faulty registrations and cutting down on the growing number of ineligible trademark applications will require a four-pronged approach:

  • Educate creatives about the purpose of trademark, and how to use the Letter of Protest system to alert USPTO of questionable applications.
  • Continue to raise awareness at USPTO via ongoing training initiatives.
  • Educate attorneys in the private sector about the issue, and require some minimal standard of client education. Obstetricians are required to inform patients of pregnancy risks. Trademark attorneys should be required to inform clients of failure to function risks in their industry.
  • Every new USPTO trademark registration notification should include stern warnings about trademark overreach and the risk of trademark cancellation for guilty parties. Owners should be required to sign a declaration of understanding regarding the limits of enforcing trademark rights.
  • TTAB must select more precedent-worthy cases involving registrations that affect typical print-on-demand classes.

Just my two cents. I’ll bet Dr. Roberts has lots more ideas, and better ones, too!

What can you do?

Choose to get involved.

Are you an attorney? Share this series with your colleagues. Help them understand what’s at stake. I’m all for protecting your client’s T-shirt designs from copycats. But that’s not the purpose of a trademark, and Y’all should certainly know that better than some post-menopausal homeschool mom in the middle of nowhere.

Are you a creative? Please, for the love of freedom, learn how to build a brand on what you stand for instead of your favorite T-shirt slogan. Build a brand on you. Choose a brand name that looks and sounds like a brand. Hint: “Best Mom Ever” won’t cut it. (Oh my! Someone else is trying it again!) Learn to keep an eye out for goofy trademark applications, and how to file a Letter of Protest against them. Join a group so you can provide solid evidence, and avoid filing duplicate protests.

DId you learn anything from this article? Leave a comment on my Facebook business page to let me know. It took about eight weeks away from my family to finish this series and figure out how to set up a blog to host it, so it’d be nice to know if it helps you.

The Ultimate Free Protection from All Calamity

The real root of questionable trademarks is a problem I can’t help you with. But I know Someone who can.

Because the root of all questionable trademark applications is one of two things: fear or greed.

You don’t have to live with either one, my friend. Jesus can deliver you from these and so much more.

He paid for our sins to reconcile us to God. And once we turn from self-reliance to trust His sacrifice, the love of God is shed abroad in our hearts by the Holy Ghost (Romans 5). Perfect love casts out fear. We can live with purpose. We can serve the world and prosper. And we can let God do exceeding abundantly above all that we ask or think.

Here’s How to Come to God.

It’s a wonderful life.

xoxo,

Morgan

This is Part 12 of a 12-part series about the threat and impact of questionable trademarks. See below for a complete list: