Fighting Frivolous Trademarks Groups

Alone, we can do so little; together, we can do so much.

Helen Keller

About a year into my “fighting frivolous trademarks” journey, I left the group I’d joined to avoid any appearance of favoritism. But that doesn’t mean I’m against groups! It only means that, as one who hopes to work directly with USPTO to improve the system, I dare not take sides in seller community controversies over what is or isn’t a frivolous trademark, or what should or shouldn’t be protested. 

I’ve had many conversations with the same Attorney Advisor at USPTO — a helpful, knowledgeable, gracious man I’ll call “Joe” here to protect his privacy. One point Joe has often reiterated is this: USPTO welcomes Letters of Protest because their goal is to issue quality registrations and Letters of Protest are very helpful in that process. The only caveat is, they don’t want multiple protests for the same application. That just creates extra work, and bogs down the system.

So, in addition to this website, I strongly recommend you join one of the “Frivolous Trademarks” Facebook groups, for three reasons: 

1. It gives you a way to coordinate Letter of Protest efforts to avoid multiple protests being filed against the same application (more than five is considered spam by USPTO and will be disregarded); 

2. It gives you a place to ask questions as you analyze whether an application should be protested (in case you’re having a hard time applying my “LOP Triage” tips to the situation); and, 

3. It gives you a place to be encouraged and to encourage others in the fight against frivolous trademarks. 

Here are the groups I’m aware of. Join any or all of these communities to make a difference!

Trademark Watch Dawgs – Stop Frivolous Trademarks, 9.7k members

Metal Stampers Against Frivolous Trademarks, 92 members

Makers Against Frivolous Trademarks, 108 likes (this was an active group last year, try sending them a message if you’re interested in joining)

Link: Search the Trademark Official Gazette

Here’s the link to search the Trademark Official Gazette. Use it to find frivolous trademark applications that have been recently published for opposition. (Note that if the publication date is over 30 days ago, it’s too late to file a Letter of Protest.)

Here are the boxes I check on the left sidebar when using this:

Select Issues: choose dates up to 30 days ago.
Reason for Publication: Opposition
Class Numbers: Leave Blank. If there are too many results, select “International Class” and check only the classes that concern you most:

  • 06 – Metal Goods
  • 09 – PopSockets
  • 14 – Jewelry
  • 16 – Paper Goods
  • 18 – Leather Goods
  • 20 – Furniture & Articles Not Otherwise Classified
  • 21 – Housewares & Glass Products
  • 24 – Fabrics & Textiles
  • 35 – Advertising & Business (Online Store)
  • 40 – Custom Imprinting
  • 42 – Custom Design of Apparel

Leave the other options blank. If you want to pare it down to the most likely problem areas, scroll down to the Basis option and select “Intent to Use” (this is the biggest loophole exploited by trademark trolls).

It’s a good idea to monitor this at least every other week to catch marks that may hinder your business. However, it’s far better to catch them early in the process. I’ll show you how to search and review new applications in a separate post.

Trademark Terms

Here’s a glossary of trademark terms you need to understand to make sense of fighting frivolous trademarks. See all other posts regarding trademarks here.

Trademark Terms

All | # A B C D E F G H I J K L M N O P Q R S T U V W X Y Z | Submit a topic
There are currently 16 topics in this directory
Attorney Advisor
At USPTO, each Letter of Protest is reviewed by an Attorney Advisor to be accepted or denied. If accepted, the LOP will be forwarded to the Examining Attorney for review.
Submitted by: Morgan Reece

Drawing
If the term is not yet being used in commerce, the applicant must submit a drawing (a specimen will be required before the trademark is registered). For word marks, the drawing is essentially the word typed out.
Submitted by: Morgan Reece

Evidence

Information to support whether a belief is true or valid. When it comes to fighting frivolous trademarks, your opinion and the applicant’s past or present actions are irrelevant. Each Letter of Protest must be supported with evidence that meets USPTO's strict guidelines. These guidelines may be different, depending on the basis of the protest. (See also Legal Basis.)

Submitted by: Morgan Reece

Examining Attorney
USPTO has around 600 Examining Attorneys (EAs) who examine incoming trademark and patent applications. The EA must review the applicant's paperwork in accordance with TMEP. This includes checking for accuracy (for example, proper categories selected) and performing a search of the USPTO database to determine whether there are similar existing marks (either registered or applied-for before the current application). If the EA receives a Letter of Protest to review, they must determine whether the evidence supports a refusal of the application. This decision must be supported by case law (especially that referenced in the TMEP), not their opinion or "gut feeling." See also Intellectual Property Law, TMEP.
Submitted by: Morgan Reece

Failure to Function
Failure to Function as a source indicator (brand name). In a nutshell, "failure to function" is talking about scenarios like this: T-shirt displaying "World's Best Mom" -- nobody thinks "Best Mom Ever" is the brand that produced the shirt; Garlic press imprinted with "Stainless Steel" -- the consumer will most likely think the press is made of stainless steel, not that a brand named "Stainless Steel" produced it. When a "trademark" term is not likely to be perceived by the purchasing public as the producer or source of the product, USPTO says the term "fails to function as a source indicator." To read a lovely, insightful, and long explanation of how this has become a huge issue in the trademark world, see this Iowa Law Review article by Dr. Alexandra J. Roberts. (And, to see how print-on-demand sellers influenced this article, click on Footnotes 31 and 207!)  
Submitted by: Morgan Reece

Fake Specimen Report

If the specimen is a mock-up, a fake specimen report should be submitted (in addition to a Letter of Protest, if appropriate).

Submitted by: Morgan Reece

Frivolous Trademark

Potentially overreaching trademark applications or registrations used to initiate frivolous claims of infringement.

These occur in every industry. Examples: STAINLESS STEEL (for garlic presses); ONCE A MARINE, ALWAYS A MARINE (for clothing).

“Frivolous Trademark” is a subjective term coined in the Amazon seller communities. Its use in this or other training materials should not be construed to suggest wrongful intent on the part of trademark applicants or owners.

Submitted by: Morgan Reece

Joe
An Attorney Advisor with over 20 years experience at USPTO. Morgan's contact. See more in this post.
Submitted by: Morgan Reece

Legal Basis

Letters of Protest require the protester to select a legal basis for the protest. In other words, what case law exists to support a refusal of this application? What is the legal reason it should be denied? USPTO doesn’t have the authority to grant or deny registrations based on opinion. They must follow the rules of case law, which means they must be able to state the legal basis for refusal and support it with evidence sufficient to prove the refusal is correct.

There are several possible choices for legal basis on the Letter of Protest form. The Legal Basis most commonly used for a Letter of Protest in the print-on-demand space is:

“Failure to Function — Merely Informational and Widely Used Expression. See TMEP 1202.04 and 1202.04(b).”

Some goods, such as stamped jewelry, may be protested with a "Merely Descriptive" basis. (Example: AFFIRMATIONS. For more info, see the post-pub protest and the refusal.) The "Merely Ornamental" basis listed on the Letter of Protest form is considered inappropriate by USPTO to use for a Letter of Protest in the novelty goods category, as they assume the Examining Attorney will consider that issue without help from others.
Submitted by: Morgan Reece

Letter of Protest

A Letter of Protest is a way for competitors to oppose the trademark registration of terms they believe may harm competitors. The LOP may be filed for new applications, and within 30 days of an application being Published for Opposition. There are two levels available: “Pre-pub Protest” and “Post-pub Protest”. The standard of Evidence required for a Pre-pub Protest is much lower. Dave Cadoff has explained the Pre-pub Protest process in stunning simplicity here.

Submitted by: Morgan Reece

Post-pub Protest

Letter of Protest done after the application is Published for Opposition. Must be submitted within 30 days of the publication date. It's best to submit 75 pages of evidence plus an index. These take 2-10 days, probably less if you’re not dealing with brain fog and insomnia. Per multiple convo's with an Attorney Advisor, these are guaranteed to fail without a “slam dunk” level of evidence. If you can't find evidence that fits the checklist provided on this website, you're probably wasting your time.

Submitted by: Morgan Reece

Pre-pub Protest

Letter of Protest submitted before the application is Published for Opposition. These are easiest, and take about 15-30 minutes. It’s best to submit a pre-pub LOP within 3 months of the application filing date, before the Examining Attorney is assigned. (Earlier is better!) See Dave Cadoff's post for a step-by-step walk-through of a "bare bones" (read: quick and easy!) protest.

Submitted by: Morgan Reece

Specimen
No, it has nothing to do with urine samples. When it comes to trademark applications, “specimen” is legal talk for “show me how you're using this expression or symbol in the marketplace.” See also Drawing.
Submitted by: Morgan Reece

TMEP
Trademark Manual for Examining Procedure, used by Examining Attorneys at the USPTO to determine whether to accept or reject trademark and patent applications. See the whole thing here.
Submitted by: Morgan Reece

Trademark Troll
One who uses a trademark to control access to popular phrases or marketing terms (rather than for building a unique brand). See my Stealth post for an example.

USPTO
From their website: The United States Patent and Trademark Office (USPTO or Office) is an agency of the U.S. Department of Commerce. The role of the USPTO is to grant patents for the protection of inventions and to register trademarks.
Submitted by: Morgan Reece


Submit a topic

Stealth Troll:

Here’s a sickening tale of how one “IP entrepreneur” shamelessly used his “stealth” trademark as a cash cow until the Seventh Circuit Court stopped him.

In a nutshell, the owner of the STEALTH trademark sued anyone under the sun for the rights to use the term on their products, even though his 33 registrations were unsupported (no solid proof of actual sales). In the end, the court canceled the mark in question. Score one for freedom!

Excerpts:

[Third parties,] when threatened with litigation… entered into licensing or settlement agreements for use of the STEALTH mark. These agreements cover a startling collection of products, ranging from “hand tools to make prosthetic limbs to construction consulting services to track lighting.”

It was reported that [the trademark owner] even accused Sony Pictures of infringing the STEALTH mark by including the word as the title of a film featuring Navy pilots.

Not only did the Seventh Circuit approve of the district courts decision to cancel the plaintiff’s mark, the court stated that “where . . . a registrant’s asserted rights to a mark are shown to be invalid, cancellation is not merely appropriate, it is the best course.”

Consumers, trademark owners, and competition all directly benefit by vigilant enforcement of the use in commerce requirement.

Marks that have been registered for less than five years may be cancelled “for any reason which would have been sufficient to deny registration in the first instance.”62…

[A mark] may always be challenged on the grounds that it has been abandoned regardless of how long a mark has been registered.64

The TTAB has jurisdiction over four types of inter partes proceedings: oppositions, cancellations, interferences, and concurrent use proceedings.76 Cancellation proceedings may be initiated by any person who believes that they are or will be damaged by a registered mark.77 An inter partes proceedings before the TTAB is similar to district court proceedings in that there are pleadings, motions, discovery and brief filing.78 They differ, however, because the TTAB is an administrative tribunal and thus, proceedings are conducted solely in writing.79 A party to a proceedings may never even come before the board, by way of giving witness testimony or otherwise, unless a party requests oral hearing on the matter.80

[Where] one doubts the validity of a registration it is always the better course to petition to cancel the mark rather than adopting a “wait and see” approach.83

Unlike inter partes procedures before the TTAB, cancellation of a trademark cannot be the only basis of a plaintiff’s suit.93 The Seventh Circuit has held that federal courts do not have jurisdiction to hear a claim for cancellation brought by a plaintiff without a current registration.94

As noted above, although the plaintiff claimed to be either the registrant or assignee of “33 federally registered STEALTH or STEALTH formative marks,” only two were conceivably relevant to this suit.116 This is due to the likelihood of confusion requirement: only the use of a mark that is likely to cause consumer confusion is actionable.117

If there were a commercial use spectrum, Central Manufacturing would be at the bottom of the evidentiary standard of proof. In characterizing the plaintiff’s proof as “unsupported assertions” and “unauthenticated evidence of small amounts of sales,” the court held the plaintiff failed to prove ownership rights to the STEALTH mark.128 The most obvious problem was the lack of invoices and receipts characteristic of actual business transactions between the plaintiff and consumers or businesses.129 However, to support his claim of ownership the plaintiff attempted to admit the following documentary evidence: advertising material and charts of “sales” activity.130 The court rejected this evidence as unsubstantiated, unbelievable or both.

Page 474:

the court stated the law was clear that “mere advertising and documentary use of a notion apart from the goods do not constitute technical trademark use.131

(See p.475 and following re: evidence of commercial use standards.)

Page 478:

After assessing the parties’ respective arguments, the district court granted the defendant’s motion for summary judgment.160 In granting the defendant’s motion, the court also took two steps seemingly outside of the norm of trademark litigation: the court ordered the plaintiff to pay the defendant’s attorneys’ fees and costs and ordered the cancellation of the plaintiff’s 249’ registration.161

Read the full article at the Chicago-Kent College of Law here.

The author of the paper is Anna B. Folgers.

define: Frivolous Trademark

…the mere use of the “TM” or “SM” notation, in and of itself, cannot transform an unregistrable term into a trademark or service mark. See In re Volvo Cars of N. Am. Inc., 46 USPQ2d 1455, 1461 (TTAB 1998).

USPTO Trademark Manual of Examining Procedure, §1202.04, paragraph 3

Frivolous trademarks are applications or registrations which may be used to control the use of phrases. Owners bully their competition with frivolous IP infringement claims to achieve a monopoly. It’s a subjective term coined in the Merch By Amazon seller communities to identify terms that either: 

  1. “fail to function as source indicators” — in other words, the relevant consumer would not recognize the term or phrase as a brand or source, only as a popular social, political or informational message or slogan (examples: I LOVE DC; BOSTON STRONG; BEST MOM EVER); or, 
  2. are descriptive of a certain niche (BASKETBALL) or user (DOG MOM), or are used as key terms used across many niches (PERFECT GIFT; FUNNY AND UNIQUE).

Like trademark trolls, frivolous trademarks occur in every industry (examples: DRIVE SAFELY (for automobiles); ONCE A MARINE, ALWAYS A MARINE (for clothing)).  

In contrast, “legitimate trademarks” are those that would be recognized as a brand by consumers.

To reiterate: frivolous trademarks are those which may be used by trolls to chill competition. Not all applicants/owners of frivolous trademarks are trolls; some are just trying to protect themselves. I could give many examples, but that’s a longer post for another time.

Merch and Etsy sellers must be on constant guard against trolls and frivolous trademarks or risk losing valuable assets. The trolls are out there. Are you ready? 

Frivolous Trademarks Matter

Suppose you are doing keyword research on MerchInformer or TradeMerch.io. You find a great niche like “best mom ever shirt” but a quick search at USPTO reveals a pending application to register “Best Mom Ever” as a trademark for shirts. In 2017, that was the end of the story for you. Move on to another niche. But that’s not true anymore, especially if it’s a new application. You can file a Letter of Protest with USPTO against frivolous trademarks like this. It’s free, takes only a few minutes. Dave Cadoff has an excellent post explaining the basics.

Or, suppose you receive an IP infringement notice from Amazon or Etsy, but when you compare your design to the supposedly infringed product, you see it is merely a variation of the same slogan (or worse yet, the trademark is of a common word frequently used as a design element). The claim would never hold up in a court of law! Yet without the right knowledge, you’d be stuck.

Even though the infringement claim is ridiculous, Amazon and Etsy are unable to help you. Get enough of these frivolous claims and you may lose your account. I’ll show you how to dig up the information you need to compose and articulate and compelling response to persuade that bully to withdraw their complaint.

Frivolous trademarks put your entire creative business at risk. That’s why I’m moving my FREE resources to this site, so they will be accessible to all who need them. No membership or email sign-up required.

Disclaimer: I’m not an attorney, just a homeschool mom with a passion to help protect creative freedom in the marketplace. I’m squeezing this in alongside my God-given responsibilities, so thanks in advance for your patience. Keep up with the latest via my Facebook page, or sign up for my best content.