Protest Potential: how to judge the potential success of a Letter of Protest

So, you’ve decided to file a Letter of Protest, but you want to be sure you’re not wasting your time. How can you be sure this will work?

Since each case is judged on its own merit, it is impossible for USPTO to provide a blanket checklist of evidence to include. Nor can anyone guarantee that your evidence will be “enough” to be accepted. Nor, if it is accepted, can anyone guarantee it will be enough to convince the examining attorney the application should be refused.

That said, here are the guidelines I use and recommend:

Pre-Pub Letter of Protest Evidence

Dave Cadoff has a “quick and easy” method that has been very successful in many cases. Still, Joe has told me several times, if the mark is “important” to you, it should include:

  • at least five individual products from Amazon,
  • at least five individual products from Etsy; and,
  • at least five individual products from other stores (with a total of 15 to 25 products). 

Each product should display a text/graphic that matches the phrase from the application exactly.

This is a little bit more evidence than in Dave’s walk-through. Use it if you care a little extra.

Post-Pub Letter of Protest Evidence

Joe says a post-pub Protest is destined to fail without a “slam dunk” level of evidence that USPTO made a mistake. It’s a very, very big deal. 

1. You’ve got to show widespread use:

  • Are there at least 15-20 unique products from different vendors on Amazon?
  • At least 15-20 on Etsy?
  • At least 10 on Redbubble, Society6, or designbyhumans?
  • Are there additional products offered by at least one major box store? Walmart, Target, Kohl’s, Nordstrom, Macy’s, other box stores? 

2. Is there evidence of the term’s popularity and everyday use?

  • Social media,
  • Know Your Meme,
  • Urban Dictionary,
  • Wikipedia — note, if you include Wikipedia, also include at least two of the linked references from the bottom of the Wiki article.

Note, this is extremely relevant for viral news stories, like “Boston Strong.” But the strongest post-pub protest evidence shows use in commerce (products that use the phrase to decorate the item or in marketing their goods). 

If you can find evidence that fits these guidelines, your protest has a solid chance of stopping the frivolous trademark registration. 

Top 10 Letter of Protest Facts

Here are 10 facts every entrepreneur should know about the Letter of Protest system and the fight against frivolous trademarks:

  1. A Letter of Protest is a way for anyone to oppose the trademark registration of terms they believe may harm competitors.
  2. Anyone — living anywhere! — can file a Letter of Protest. No age, citizenship, or business ownership requirements. You just have to care.
  3. More than 5 protests against the same application will be disregarded. (This is why I recommend you coordinate efforts with a group.)
  4. Filing is free, and takes 15-30 minutes for a Pre-pub LOP. Post-pub LOPs take much longer. 
  5. The best time to submit a Letter of Protest is the day the application is filed. The next best time is now (for Pre-pub LOPs) or before the opposition deadline (for Post-pub LOPs).
  6. If 30 days have passed since the application was Published for Opposition (noted on the “Status” page of TSDR), it is too late to file a Letter of Protest.
  7. You are the linchpin in USPTO’s refusal of frivolous trademarks that affect your business. It is your responsibility to inform them of facts specific to your industry that may affect outcomes, and their responsibility to review those facts in light of case law. Don’t sit on your hands and then complain when you don’t like the outcome.
  8. When it comes to print-on-demand, you’ve got to pay to play. Time invested in understanding and fully using the Letter of Protest system will save you money by avoiding unnecessary product losses and attorney fees.
  9. CLASSES NOTE: The guidelines provided on this site mostly pertain to applications for trademark registration of terms in physical product or print-on-demand classes such as (but not limited to) 009, 014, 016, 025. They must be adapted for restaurants, hotels, business services, and so on (notes specific to IC 035, online retail services, are included here).
  10. Fake Specimen Reports are an alternative way to share important information with USPTO. If the specimen is a mock-up, a fake specimen report should be submitted (in addition to a Letter of Protest, if appropriate).

Why So Many Frivolous Trademarks?

No man is entitled to the blessings of freedom unless he be vigilant in its preservation.

Douglas MacArthur

Insiders say frivolous trademarks are responsible for millions of dollars lost/stolen from small businesses each year. Every business owner owes it to themselves to learn how to defend themselves from frivolous trademarks and trademark trolls. Yet, learning is not enough. (For more on this topic, see “Why can’t you play fair?”)

 Knowing is not enough. We must apply. Willing is not enough. We must do.

Bruce Lee

At this point, you may be wondering, “Why are so many frivolous trademarks getting registered?” Good question. Here’s the six-word answer: Ignorance and apathy (yours and mine).

USPTO is counting on you!

The US trademark registration process includes an option for anyone, anywhere to file a Letter of Protest against applications that should not be granted. Why? Because USPTO depends on competitors (“stakeholders”) to share vital market information with them so they can issue quality registrations.  

For most of the terms we protest in the novelty apparel/print-on-demand industry, the legal basis of the Letter of Protest is “failure to function as a source indicator.” The main legal test for this is, “What is the consumer’s perception? What’s their first impression of this phrase? Brand or popular saying? Or, when it comes to jewelry, maybe it’s simply an item description?”

What you MUST get from this post

Those of us in the print on demand industry will have a much different first impression than the average USPTO attorney. 

The folks at USPTO are not marketing experts. They are legal experts. IP law is notoriously complex, and the question of whether a term should be available for registration depends on many factors. It’s up to you and me to supply USPTO with relevant information — information we can easily provide!

USPTO expects you to let them know if a registration will negatively impact your business. That’s why the Letter of Protest system exists. That’s why it’s free. 

So, the reason so many frivolous registrations have been issued is that we didn’t know what we didn’t know:

  • We didn’t know we were supposed to be watching out for the black-hat tactics of trademark trolls. (Ugh!)
  • We didn’t know we weren’t supposed to make the mess bigger by trying to beat them to the punch with our own frivolous applications. (Oops!)
  • And after learning how the system is supposed to work, most will be too apathetic to get involved.

(Cue the music: Dum-dum-dah-dah, dum-dah-dum-dah-dum-dah-DUMB!)

Small business ownership comes with responsibilities that have nothing to do with selling your awesome stuff. But most newbies in the Print on Demand space are ignorant of those responsibilities, or unwilling to take them on.

We’re like that toddler in the messy diaper. We think someone else should clean up the mess.

Uh, no. 

It’s time to put on the big boy pants. 

define: Trademark Trolling

I have always thought the actions of men the best interpreters of their thoughts.

John Locke

define: Trademark Trolling

Trademark trolling means using one’s trademark registration to limit competition. Here’s the technical definition of trademark trolling:

The United States Patent and Trademark Office (“USPTO”) defined the amorphous term Trademark Bullying or Trademark Trolling as the vexatious practice of a “trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow.” 

Source: IP Watchdog

 It happens in every industry: big brand sues little brand for “IP infringement” over the use of a similar name, even though the average consumer would not be confused.

But it’s not always a big brand. Trademark trolls come in every “size” of business. See my Stealth post for one glaring example. See Dr. Roberts’ article for a peek at why they are so successful. 

Not all frivolous trademark owners are trademark trolls. Some are simply uninformed folks following bad advice to protect their assets. More on that another time.

Trademark trolls can be split into two categories: those that use legitimate trademarks, and those that use frivolous trademarks. 

Rules of the Game (IP for Newbies)

You have to learn the rules of the game. And then, you have to play better than anyone else.

Albert Einstein

To clean up the frivolous trademark mess at Amazon and Etsy, we need to start with a basic understanding: 

Trademark is for Brands, Copyright is for Designs 

Trademark is for brands, for example:

  • Ann Arbor T-shirt Co.
  • Disney
  • Southern Attitude
  • Star Wars
  • Under Armour

Each of the above brands offers unique selling propositions (USP) to attract loyal customers: 

  • Ann Arbor T-shirt Co. — employee models, special inks, Michigan artists
  • Disney — entertaining customers via media and amusement parks
  • Southern Attitude — celebrating Southern pride
  • Star Wars — media empire built on successful movie series, toys, decor, etc.
  • Under Armour — influencer marketing partnerships, sports camps, fitness app, inspiring ads

Trademark protects consumers from getting counterfeit products, thus protecting a brand’s reputation and value. 

Suppose products from Brand X (a hypothetical, high-end clothing company) are being copied and sold at a lower price by a knock-off supplier who slaps the “Brand X” logo onto their cheaply made products. The US trademark system recognizes:

  • Brand X may invest millions of dollars in marketing campaigns to build brand loyalty and trust; 
  • A purchaser whose counterfeit Brand X shirt falls apart after one washing may conclude product quality is not a priority with the Brand X company, devaluing the brand; 
  • If Brand X has registered BRAND X as a trademark, they can pursue legal action against the knock-off supplier to force the removal of these counterfeit products from the marketplace.

Copyright works the same way, except that instead of protecting a brand, it protects original creative works. Think paintings, songs, plays, books, etc. 

Simple, right? Trademark and copyright are wonderful inventions when used properly. But greedy or fearful people often abuse the system to “protect” their turf and chill competition. 

The “Trademarks” section of my blog focuses on trademark abuse in the print-on-demand industry via twin bandits: frivolous trademarks and trademark trolls.

Messy Diapers: Why I Fight Frivolous Trademarks

Ever seen a toddler who actually wants to wear a messy diaper? As Dave Ramsey describes them, “Yeah, I know it’s messy, but it’s mine and it’s warm.”

Too many Merch and Etsy sellers are just like that toddler. 

See, there are twin, growing “messes” in the print-on-demand industry (POD): 

  • trademark trolling or overreach 
  • frivolous trademarks

We’ve heard about frivolous trademarks and how they are harming the industry. We know there’s a mess, and it’s getting bigger. But we want to play online doing fun stuff a couple of hours a day and watch all that passive income roll in. If things get messy around us someone else can clean it up.

Act as if what you do makes a difference. It does.

William James

It’s time for Merch and Etsy sellers to own the mess caused by frivolous trademarks. Building a real business comes with real responsibilities. 

I don’t say that harshly. I had my own “head in the sand” attitude for the first six months or so that I heard about this problem: 

  • I’m too busy. Don’t you know how hard I’m working on my FBA business? 
  • I’ve barely had any Merch sales anyway — I’m a newbie, a nobody. No skin off my nose.
  • This only affects the big-time sellers. 
  • Don’t get me wrong — I’ll do my due diligence! I won’t infringe on someone else’s trademark! But there’s nothing I can do to stop them… or is there?

Finally, in February 2018, I saw Ken Reil “beating this drum” again. Ken’s presentation at a Merch workshop months earlier had helped me. For the first time, I saw this as an issue that affected someone who mattered, if only because they’d helped me. So when Ken announced his discovery of USPTO’s Letter of Protest system, I jumped into research mode.

I started on this journey to help Ken, and I continue it today to “pay it forward” in gratefulness to the many members of the Merch, Amazon, and Etsy communities who have helped me in my entrepreneur journey. Let’s clean up the mess!