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.

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).

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)

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


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LOP Examples: Bible Verse

When filing a Letter of Protest against an application to register a Bible verse or other religious quotation as a trademark, here’s what you need to know:

  1. Legal Basis: Failure to Function – Religious Text See TMEP 1202.04(c)
  2. Evidence: It’s not enough to tell USPTO the verse reference. They need to SEE proof that the verse is in the Bible, Koran, or whatever. For WITH GOD ALL THINGS ARE POSSIBLE, I submitted the Google Search results (because the first one listed put the phrase in bold print as part of the first result, and showed the verse reference), and a page from BibleGateway showing the entire verse in context. (NOTE: I printed these PDFs using Fireshot, in incognito mode. If you forget to use incognito, you should edit the file before uploading to remove any personally identifying information. Also, be sure the PDF includes the URL & date of capture. Fireshot adds this automagically.)
  3. More Evidence: Just for good measure, I included the Google Shopping results (splitting them into part 1 and part 2 to keep the file size under 30 MB per USPTO’s requirements). (NOTE: If the Legal Basis was “Widely Used Message, TMEP 1202.04(b)” as in Dave Cadoff’s excellent example here, this evidence would be inadequate for a post-publication Letter of Protest. Dave’s method works well early in the process, which is where anyone fighting frivolous trademarks should concentrate their efforts. But sometimes, as in this one, things get farther along before the application is discovered.
  4. Description of Evidence I Used: “1) Google search results, showing the term is an excerpt from Matthew 19:26, NIV Bible; 2) BibleGateway results, showing full text of verse; 3) Google Shopping results, showing the phrase used on a wide variety of goods (signs, jewelry, pillows, journal, pocket tokens, wall art, decal) from a wide variety of platforms (including Amazon, Etsy, Christian Book Distributors, Kohls, Poshmark (Nordstrom bracelet), Gifts Catholic, and more).”
  5. To see a redacted USPTO receipt for filing (to double-check how to complete the form), click here.

Will It Work?

Sadly, this one may fail, as the deadline for opposing was yesterday (30 days after the application is published for opposition). I filed this anyway because I only checked on it this morning, and since it is a simple, CLEAR ERROR on USPTO’s part, I’m hoping they’ll accept it past the deadline. (It took longer to write this blog post than it did to prepare and file the LOP.) We’ll see.