Dealing With Your Friendly Local Trademark Troll

So @IODarren, by way of @questauthority, made me aware of this presently pending trademark registration application:

The applicant is claiming that the phrase FRIENDLY LOCAL GAME STORE is (or will be) a trademark for… game stores. “This is an approach,” as one of my favorite fictional characters is fond of saying. However, it is not an approach which is likely to meet with much success. The Trademark Office has already issued an Office Action initially denying registration on the grounds of, among other things, that this phrase is merely descriptive of game stores and so it cannot function to identify any particular game store. You can read the Office Action here:

http://legalinspiration.com/wp-content/uploads/2020/05/88788453.pdf

Now, leaving aside the question of whether this application will succeed in and of itself, another question arises. Suppose you are an interested party who does not wish to see the registration issue, either because it will hurt you directly, or because you think it is inappropriate to grant exclusive rights over the use of the phrase in commerce in general. What can you do to reduce the chances that the application will be approved and/or that a registration will issue? Basically, two things. Some people can do both, some people can only do the first thing. Allow me to expand:

Letters of Protest

A “Letter of Protest” is a document that anyone can file with the Trademark Office during the initial examination of a trademark registration application. There are three distinct phases to a trademark application’s examination, and while a Letter of Protest can be filed during any of them, the burden on the filing party changes as the examination proceeds.

First Phase: Filing Date to Approval for Publication

Trademark registration applications, unlike patent applications, are not private or confidential, and are usually visible on the USPTO’s website within three to five days of being filed. So anyone who wants can see what applications are pending at any given time. If an interested person sees a pending application that they think is problematic, they can file a Letter of Protest, which is an informal filing that the USPTO will consider, but is not obliged to act upon, and which does not become part of the official record of the application.

The way they work is that you file them – there’s no fixed form – and a special office reviews them and decides whether they meet the standard to be forwarded to the Examining Attorney for their review as part of the examination of the application. If not, they basically pitch them. If so, they forward them to the Examining Attorney as a piece of evidence that they can use while determining whether the registration should issue. If you want to see the rules for how this works, here’s a link to the relevant page in the Manual:

https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1700d1e853.html

Now, there are things which are appropriate for a Letter of Protest, and things which are not. First and foremost, what is not appropriate is a “merely adversarial” protest. This means you can’t just say, “That’s a stupid trademark,” or “I should get this trademark,” or “This Applicant is a trademark troll and they will use the fell power of a U.S. Trademark Registration for dark and loathsome deeds.” One or more of those may be true but they are not things the USPTO considers at this phase.

What is appropriate is evidence that the registration should not be issued because the trademark is either not capable of identifying a unique source of goods and services or that it will cause a likelihood of confusion with an already registered trademark or prior-pending application for a registration. In other words, either the mark is generic (like trying to register GAME STORE for stores that sell games,) merely descriptive (like trying to register FRIENDLY LOCAL GAME STORE for stores that sell games and many if not all of which presumably have some level of friendliness and locality as general attributes,) or someone else has already registered it or filed an application to register it before the application at hand was filed.

This is really important because what this does not include is evidence of prior use absent a registration or prior application. If someone else – either the person filing the Letter of Protest, or some third party – is already using the trademark but does not have a registration or a pending application, as far as the USPTO is concerned (at this stage) that is irrelevant. Examining Attorneys can only take registrations and pending applications into account, period. (Sometimes this produces what seem like nonsensical results but there are very good reasons for it.)

There are some other reasons which are accepted – for example, if there is a pending lawsuit about the ownership of the mark – but these are the big ones which most people reading this will care about.

So what goes in a Letter of Protest? Well I’m not going to get super specific because that might be legal advice and I won’t give legal advice to people who aren’t my clients. On that point, though, it is interesting to note that there is a Facebook group called “Trademark Watch Dawgs” that tries to coordinate the filing of Letters of Protest among online retailers to attempt to get ahead of trademark trolls. I occasionally post there as do some other trademark lawyers, but mostly it’s about non-lawyers assisting each other. They do have guides and sample Letters of Protest that they share.

In any event, generally speaking you set forth your grounds for protest, in an organized and specific fashion, and you include evidence to back them up. You must include some evidence, and not just allegations (that would be a “merely adversarial” protest.) But the evidence can be informally formatted as long as it’s understandable and coherent.

For instance, if you were claiming that “Friendly Local Game Store” was generic, you might include citations to the dictionary definitions of the words or to a trade industry document that used the phrase to describe all game stores and indicated that it was standard practice in the industry. If you were claiming it was merely descriptive in the specific context of the goods and services claimed, you might include PDF of web pages from discussion groups for people who like to buy things from game stores showing that they refer to lots of different game stores as “friendly local game stores.”

If you were claiming that someone else (you or a third party, doesn’t matter for a Letter of Protest) already has a registration or a prior pending application for a similar mark for similar goods and services, you would specify the registration numbers for issued registrations or the serial numbers for pending applications. Say, for instance, you had a registration for AVUNCULAR GAME RETAIL EMPORIUM for game stores. You might submit the registration number and evidence that the marks are confusingly similar, such as comparing the dictionary definitions of the individual words and then showing that combined, they had a similar meaning and there is a likelihood of confusion. This is NOT the same thing as opposing the registration: you are merely making the USPTO aware of potentially relevant information. If the special office thinks the marks or the goods are too far apart they will not submit them to the Examining Attorney and even if they do the Examining Attorney is not obliged to agree with your assertion or even acknowledge it.

Second Phase: Approval for Publication to Thirty Days After Publication

After the application is approved for publication, which means that the USPTO didn’t find any conflicting registrations or prior-filed applications and does not consider the mark to be generic or merely descriptive, all of the above requirements still apply to have a Letter of Protest considered. However, a new burden also attaches, which is that the Letter of Protest must show that the approval of the application for publication was “clear error.” In other words, if the Examining Attorney had known what was in the Letter of Protest before they did it, there is just no way that they ever would have approved the application for publication. An example of this would be the Examining Attorney just somehow flat missing an existing registration for the same mark for the same goods (which basically never happens) or evidence that the mark is actually a common and generic term of art in the relevant chain of commerce but the Examining Attorney, for whatever reason, did not discover this beforehand.

The special office will only approve a Letter of Protest if this standard is met: however, if this standard is met, it is a very good bet that the approval for publication will be withdrawn – in fact, absent unusual circumstances, the Examining Attorney has to issue a refusal, because we don’t cotton to clear error in these parts, nosirree Bob. So it’s a high bar, but the reward if you clear it is that your protest will almost certainly be successful.

Third Phase: More than Thirty Days After Publication to Issue of Registration

Even if the issuance of the registration is delayed because of a pending Opposition (see below) the USPTO will almost never consider Letters of Protest filed more than thirty days after publication. They can, but there must be extremely unusual circumstances, which are beyond the scope of this post.

Oppositions

The other thing you can do to try to stop a trademark registration from issuing is to file an Opposition. An Opposition is basically a mini-lawsuit filed in the Trademark Office, specifically before the Trademark Trials and Appeals Board, or TTAB. This is done by filing a Notice of Opposition and paying the filing fee. Oh, did I not mention the fee? There’s a fee. (There’s no fee to file Letters of Protest.) It’s US$400.00 per class. For the application I linked to above, despite the gigantic laundry list of services (see this post for why that’s not necessarily a good idea) there’s only one class, so there’d only be one fee.

Speaking of fees, while anybody can file a reasonable Letter of Protest with some care and consideration, as I said an Opposition is basically a mini-lawsuit, and for a lawsuit, you are going to want a lawyer. Which means you are going to pay legal fees of, almost certainly, thousands of dollars, and possibly more. (Still cheaper than an actual lawsuit, and definitely much faster.) It is not a thing to do lightly. Talk to a trademark attorney as early in the process as you can. The good news is that you can file extensions of time to file your actual opposition, so in a pinch, you can stop the clock for a month or two by paying a few hundred dollars.

Another difference between a Letter of Protest and an Opposition: anyone can file a Letter of Protest, but only someone with standing can file an Opposition. What’s standing? Standing is about three weeks in the Civil Procedure course in law school, that’s what standing is. But to summarize, standing means that you have an identifiable and specific interest in the outcome of the proceeding. Consumers, in general, don’t have standing to file trademark oppositions. Only someone who would specifically (potentially) be damaged if the registration issued can file one.

So if I sell similar goods and services, and I believe the mark is generic and it would make it impossible for me to reasonably identify my goods and services in the marketplace, I can file an Opposition. If I have previously used the same or similar mark in interstate commerce (which is important!) for similar goods and services and therefore believe I have superior rights to use it, I can file an Opposition. Those are the primary grounds for standing in trademark oppositions. If you file an Opposition without standing, it will be dismissed, either rejected at the outset if you don’t assert standing, or dismissed for failure to establish standing when the Opposition is underway.

A Notice of Opposition can only be filed after the application is published for opposition. Unlike a Letter of Protest, you can’t file an Opposition until the USPTO has basically decided to allow the mark to register. This is because until that happens, it’s not reasonable to begin a separate and resource-intensive proceeding, since the Examining Attorney might refuse the registration and make the whole thing moot. Once the application is published, any individual with standing may file a Notice of Opposition. Of course ideally you’d start getting ready to do this long before, but the actual window of time to file is from the date of publication to thirty days after publication. If you need more time, you can pay a relatively modest fee for a one or two month extension. But the time limit is the time limit: it cannot be further extended, for any reason.

Once a Notice of Opposition is timely filed, the Opposition proceeds according to a fairly straightforward and fixed set of rules. First, the “defendant” – the party trying to register the trademark – must file an Answer to the Notice of Opposition. The Notice of Opposition serves as the equivalent of the Complaint in a Federal District Court lawsuit (also called a Petition in some state courts.) If the defendant doesn’t file an Answer, the Opposition may be granted by default, which means that the trademark will not be registered. It’s possible to set aside such a default, but it’s not easy. Defaulting, as in any legal situation, is a Bad Idea.

After filing the Answer, assuming the Opposition survives (the Answer may have contained the equivalent of a Motion to Dismiss, asserting that the Notice of Opposition does not meet the minimum requirements for an Opposition, and if the TTAB agrees the whole thing might go away right there) next comes the discovery period, where the parties can force each other to produce relevant evidence regarding their respective claims to exclusive use of the mark. This takes the form of things like interrogatories (lists of allegedly relevant questions,) depositions, and requests for documents and records the other party may have. Again, this works pretty much like a lawsuit in Federal court.

After discovery, the “trial” begins, which consists of taking and submitting testimony. Unlike a Federal District Court proceeding, the testimony is not taken in the presence of the TTAB. Each party gets a time period to take testimony, and the other party must be allowed to cross-examine witnesses who are submitting testimony. The resulting testimony is submitted to the Board by the time the period for taking testimony ends. All testimony must be submitted in the form of written transcripts: the Board does not watch live video or audio nor review recorded video or audio.

Did I mention that this can get expensive?

Following the testimony period, each party submits a main brief, making their best arguments, in light of the discovery and testimony, as to why they should get their way. That is, the plaintiff (the party who filed the Opposition) argues that the registration should not issue, and the defendant argues the opposite. The plaintiff files their brief first, and then the defendant files within a certain time after that. As the burden of proof is on the plaintiff, they are allowed to file a reply brief after reading the defendant’s main brief, though it is optional. The defendant is not allowed to file a counter-reply: brief submission ends with either the defendant’s main brief or the plaintiff’s reply brief.

The parties may request an oral hearing, which can be in person or by videoconference. This is also optional. If it is requested, the TTAB will arrange for a hearing: a request for a hearing may not be refused. Such a hearing is very like the closing arguments stage of a civil trial – no new evidence or testimony may be introduced, the parties get one last chance to sum up and sell their arguments to the TTAB. In a way it’s also like an appeals court hearing, in that the TTAB “judges” – board members – can and do ask questions much more frequently than a trial judge would be expected to.

After the submission of testimony and briefing, and the oral hearing if any occurs, the TTAB makes a final decision. If they decide for the plaintiff, the trademark registration application is denied. If they decide for the defendant, pending any other oppositions, a registration will issue in the normal course as if the Opposition had never happened. As with a court trial, the losing party has various opportunities to appeal, including asking the TTAB to reconsider or appealing directly to the Court of Appeals for the Federal Circuit, which has review authority over the USPTO. That gets very complicated and very expensive and is very much outside the scope of this post.

Petitions to Cancel / Lawsuits

Once a trademark registration issues, the only way to un-issue it is either to file a lawsuit and ask a court to make the USPTO un-issue it or to file a Petition to Cancel, which is sort of kind of like an Opposition only it happens after the registration issues, it’s more complicated, it’s more expensive, and it’s less likely to succeed. It’s also WAY more outside the scope of this post. I mention them only to make clear that even registered marks are not invulnerable to challenge.

Prior Users vs. Trademark Registrants

Finally, it should be noted in passing, given the subject matter of this post, that prior users of trademarks for similar goods are, in theory, not infringing on the trademark of later users even if the later users have a registration and the prior users do not. However, that is also way beyond the scope of this post and a subject which should be approached with fear, trembling, and an experienced trademark attorney. Maybe two.

I hope you found this post educational or at least entertaining. As always, questions are welcome in the comments or via email or on Twitter. Thanks for reading!

Marc

Marc Is Now Of Counsel to Stein IP!

I am excited and pleased to announce that I have become Of Counsel to Stein IP! You can see me at: https://steinip.com/professionals/marcwhipple/

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