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.
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.
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:
Legal Basis: Failure to Function – Religious Text See TMEP 1202.04(c)
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.)
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.
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).”
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.
[UPDATE 4/9/19: each of the applications mentioned below was refused before my Letter of Protests were reviewed, so these will all be moot. Sigh. Another challenge with discovering what evidence is admissible in these cases. I did, however, learn that evidence of premature use is not appropriate for a Letter of Protest.]
I’ve filed four Letters of Protest against frivolous trademark applications in Class 035 (online retail sales) in the past week. This is uncharted territory for me, as my past LOP successes have all been in typical Print-on-Demand categories like T-shirts. After a Crazy Cat Lady LOP (filed by a friend) was rejected, I asked Joe why. He explained the evidence must match the category of goods or services. Since T-shirts aren’t the same as online retail stores, that evidence of widespread use is moot (legalese for “irrelevant” — at least as far as he’s concerned).
It’s important to note (and Joe emphasized this), every attorney advisor is entitled to their opinion, and it’s sort of a gray area as the courts and TTAB have not specifically addressed the issue of evidence of widespread use in a related industry. Even though Merch by Amazon or Etsy sellers are providing online retail services (by making products available to consumers that are created after the purchase), the acceptable evidence should “look like” an online store or marketing materials for it.
(Side note: Basically, we are blessed that the examining attorney chose to refuse the “Crazy Cat Lady” IC 035 application due to its failure to function as a trademark. They based their decision on widespread use of the term on clothing and other goods, which is why the evidence attached to the refusal letter looked nearly identical to the Letter of Protest which had been denied.)
As the Lord would have it, within a day or so of my conversation with Joe, my friend Rhonda shared with me FOUR new frivolous applications in IC 035 (online retail services) I could use to test out my understanding of Joe’s explanations. This is one of those four.
Download or view the PDFs I submitted below. Check out the incredibly boring videos on my YouTube channel for the reasoning behind each piece. In a perfect world I would create an engaging script to make it less painful. Listen to them at faster speed to survive. (The first of five videos is embedded below. I’ll have to add the rest later. Click here to go directly to the playlist.)
The Letter of Protest resources available on this website were produced with extensive guidance from USPTO staff, especially that of an Attorney Advisor with more than 20 years experience.
Previously I have referred to this individual online as “my friendly Attorney Advisor contact” or “my USPTO Attorney Advisor friend.” But these terms imply a relationship of favoritism that does not exist.
USPTO staff, including Joe, have all shared their knowledge and guidance without any sign of favoritism or partiality. Anyone affected by overreaching or frivolous trademark applications may call USPTO for guidance to locate the specific sections of their website where information concerning their situation can be found.
Staff attorneys are not allowed to offer legal advice as they must remain impartial in the process. I have always found USPTO employees happy to answer specific questions regarding proper procedures, or reasons that a specific Letter of Protest was denied.
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.