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

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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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