Failure to Function Example

Love it! Here’s a great example of a term’s failure to function without widespread use on goods.

This is a big deal, because in the Merch By Amazon fight against frivolous trademarks, USPTO has typically denied Letters of Protest that did not include evidence of many competing products. But widespread use in the marketplace is not always required.

Regarding #MAGICNUMBER108, the USPTO Examining Attorney explained,

Slogans or terms that merely convey an informational message are not registrable.  In re Eagle Crest, Inc., 96 USPQ2d at 1229 (citing In re Boston Beer Co., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999)).  The more commonly a term or slogan is used in everyday speech, the less likely the public will use it to identify only one source and the less likely the term or slogan will be recognized by purchasers as a trademark or service mark.  See In re Hulting, 107 USPQ2d at 1177 (quoting In re Eagle Crest, Inc., 96 USPQ2d at 1229); TMEP §1202.04.


Can ASL Be Trademarked?

It’s not uncommon for creatives to wrongly assume they invented or coined their artistic expressions.

For example, a certain rock star wanted to register the ILY symbol.

I am not making this up.

Happily the Washington Post noticed the application and announced it to the world less than a week after it was filed.

The applicant filed an express abandonment 5 days later.

But let’s not judge him harshly.

I am reminded of my first “really original” shirt idea. I’ll even tell you the gory details:

Doing keyword research, I stumbled across a shirt that had a pretty good rank, but tons of competition. “Hey!” I thought, “I can make that even better by combining it with the ___ niche! And thus my “original” idea for a clever expression was born.

After spending two days on this design, including hand-drawn graphics (I’m self-taught, remember), I thought I should check for IP infringement before uploading. I looked on TESS, and yippee there were no trademarks pending or registered for the phrase.

Next, I checked Amazon. There were over 100 listings with the same phrase. No joke. I was so disappointed!

Well, I uploaded my design anyway, because the graphics were hand-drawn and I knew there’d be no copycat issues. I sell a few each month.

Here’s the point: it’s easy to think that, because I’ve never seen my idea elsewhere, it’s totally my “brand.” But even if I had coined the expression, or even if I “make it famous” among my followers, that doesn’t make it a source indicator.

Trademark Failure to Function by Dr. Roberts

Iowa Law Review Trademark Failure to Function and Letter from Dr. Roberts
Iowa Law Review Trademark Failure to Function and Letter from Dr. Roberts

Yippee! Tonight the boys brought this in the mail… my long-awaited copy of Dr. Alexandra Roberts’ Trademark Failure to Function article for the Iowa Law Review.

I am beyond ecstatic! My sweetheart knew something was up when I brought it to him, bouncing with excitement as I was. I’m still a bit giddy, and I’ll tell you why. For those of us in the Amazon/Etsy space fighting frivolous trademarks, this work is a monumental step towards changing things!

On top of that, Dr. Roberts was kind enough to include us (creatives who have used the USPTO’s Letter of Protest system to fight back) in a couple of footnotes. Better still, her article suggests common-sense solutions to the current problem… but alas, I did not take notes on my first skim through, so I’ll have to create a follow-up to this post later.

Seriously, you should totally send a thank you note to Dr. Roberts:

Dr. Alexandra J. Roberts
University of New Hampshire
UNH School of Law
2 White Street
Concord, NH 03301

For those who don’t know, I discovered Dr. Roberts through this post by attorney Ron Coleman. After I sent her a thank-you email, we ended up corresponding a good deal about how this issue is affecting the print-on-demand industry. I sent her research I’d gathered through Trademark Watch Dawgs (back when I was active in that group) and my own private nerdiness. (Hence the mention in the footnotes.)

So, wow bo diddly, this article is roughly a gazillion pages long, and my/our part in it is pretty small. Which puts me in even greater awe of Dr. Roberts, just for being able to compile so much evidence that change is needed, and to articulate a plan. Respect.

You can read her full article online! Footnotes 31 and 207 mention yours truly. I’m so honored to be included in this important work!