Girlboss Update

GIRLBOSS’s attorney raises some interesting points to overcome USPTO’s initial “failure to function” refusal:

  • the owner, Sophia Amaruso, already owns several trademarks for the term; and
  • she coined the phrase (unlike “I’m kind of a big deal” which was already in widespread use before the movie).

Still, I saw GIRLBOSS all over the marketplace before I’d ever heard of the applicant, and doubt consumers seeing it on a shirt or wall poster think they are buying from her.

From a “freedom in the marketplace” standpoint, it seems like it should be available for those who just want to identify themselves as a “girlboss” whether or not they endorse her per se.

Besides, having it spread wider in the novelty marketplace can make her other businesses stronger through increasing brand name recognition (see Malcolm Gladwell’s The Tipping Point: How Little Things Can Make a Big Difference).

Makers can learn a lesson from this saga: beware of building a brand on an inspiring message alone. Suppose the mark was instead “Girlboss by Sophia Amaruso”? Buyers who want to be part of what she’s doing would gladly pay to do so. And others who simply identify with the feminist rally cry that “girlboss” embodies could still find a gazillion novelty products to express their enthusiasm for the message.

What do you think? (I don’t use it on any of my products, BTW. Just an interested bystander.) 

I’m curious how USPTO will rule on this.

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.

Irrelevant Confusion: Case Studies of IP Infringement

My dad would be so happy to see his alma mater linked on my site!

And I’m not playing favorites. Because this 2010 Stanford Law Review article on Irrelevant Confusion, besides entertaining (in a sickening way), provides examples to help creatives understand why infringement is a big deal, and why a Likelihood of Confusion refusal often stops trademark applications from being registered.

Here are some brief excerpts, each preceded by my non-jargon summary:

The designer who created spin-off products (parodies) of an already famous brand was forced to stop:

The Mutual of Omaha Insurance Company persuaded a court to stop Franklyn Novak from selling T-shirts and other merchandise bearing the phrase “Mutant of Omaha” and depicting a side view of a feather-bonneted, emaciated human head.19 No one who saw Novak‟s shirts reasonably could have believed Mutual of Omaha sold the T-shirts, but the court was impressed by evidence that approximately ten percent of all the persons surveyed thought that Mutual of Omaha “[went] along” with Novak‟s products.
20

Irrelevant Confusion, P419

Even if you think there’s obviously no connection, the courts have ruled consumers might logically assume a connection, or implied approval of the main brand:

The Heisman Trophy Trust prevented a T-shirt company called Smack Apparel from selling T-shirts that used variations of the word HEISMAN, such as “HE.IS.the.MAN,” to promote particular players for the Heisman Trophy.22 This was not Smack Apparel’s first trademark lesson: a court previously ordered it to stop selling T-shirts that used university colors and made oblique references to those universities” football teams because the court believed the designs created “a link in the consumer‟s mind between the T-shirts and the Universities” and demonstrated that Smack Apparel “inten[ded] to directly profit [from that link].”
23 R

Irrelevant Confusion, P419-420

It doesn’t matter if the famous brand is in a different industry:

Respect Sportswear was denied registration of “RATED R SPORTSWEAR” for men‟s and women‟s clothing on the ground that consumers would be confused into thinking the Motion Picture Association of America sponsored the clothes.24

Irrelevant Confusion, P420

If your product reminds the consumer of a famous brand, the court assumes consumers will think the famous brand approves of what you’re doing:

…the theory in all of these cases was that consumers would think there was some relationship between the trademark owner and the defendant based on the defendant’s use of the trademark.

Irrelevant Confusion, P422

One mistake that I’ve seen creatives make repeatedly on their trademark applications (aside from trying to register frivolous trademarks) is the failure to perform an adequate search on USPTO’s database. This is something that happens frequently, even with a trademark attorney assisting in the filing process. It’s why I want to create training materials to make “due diligence” searches easier for non-techies. Let me know if this is something that interests you in the comments below or on my Facebook business page.