Has The DRAGON SLAYER Trademark Been Slain? (UPDATE 11/28/18)

UPDATE:

The USPTO has retracted its approval to publish and issued a rejection based on failure to function as a trademark. This is pretty much the worst thing that can happen to a trademark registration application. It means the mark can’t be registered even on the Supplemental Register or become a potentially registerable mark if it acquires secondary meaning/acquired distinctiveness. The only way to get around this type of rejection is to argue that the finding of failure to function is wrong, and that is not easy to do. Unless the applicant is spoiling for a long, difficult, and expensive fight, the registration application is probably dead.

ORIGINAL POST:

Back in June, MSE Media, LLC, the management company (I assume) for the rights of bestselling author Michael Scott Earle, filed a trademark registration application for the word mark DRAGON SLAYER. You can see the filing information here:

TSDR Info for “DRAGON SLAYER.”

At the time, there was some controversy, as the author community (especially the Internet/Indie author community) was on High Alert for trademark shenanigans following the “COCKY” word mark lawsuit. However, due to the way trademark registration works, there were a limited number of things that third parties could do at that point. I’ll explain briefly, and then discuss the particulars of the DRAGON SLAYER filing.

Trademarks, as trademark expert Ed Timberlake (of @timberlakelaw and Timberlake Law) is fond of pointing out, are not actually “granted” or “awarded” or “given” by the United States Patent and Trademark Office (USPTO) or its equivalent agencies in other countries. Trademarks are, essentially, earned. And the way you earn them is by forming an association in the minds of consumers between your product or service, and the trademark. (We usually refer to them collectively as trademarks, although linguistically it’s more correct to call the ones associated with a service “service marks.”) Once that happens, the law in most countries automatically starts to protect consumers by proscribing use of the mark by other people in ways that could create a likelihood of confusion in the marketplace.

I will repeat that: trademark protection, though it can have many other names like “unfair competition” or “truth-in-advertising,” depending on context, begins to function as soon as the association is formed. That is because at base, trademark law is not about the rights of providers of goods and services at all. It is about protecting the public by trying to ensure that consumers can rely on indicators of source in the marketplace: when you buy a beer bearing the mark “BUDWEISER,” you will always get a Budweiser beer experience. Even if Budweiser’s brewer had no trademark registration, if you tried to sell some other kind of beer and call it “Budweiser,” Budweiser (and/or various consumer protection agencies) could take action to stop you because you would be creating a likelihood of confusion and consumers might buy products they did not intend to buy and which do not provide the benefits they expect.

That said, obviously trademark registration is a big deal, but not for the reasons you might think. A trademark registration is not “approval” of a trademark. It is not an official decision that the required association has formed in the minds of consumers. Without that association, no trademark can exist, registration or no. The reason trademark registration is a big deal is that it creates several legal advantages for the registrant. I won’t get into all of them but the most important one is that it shifts the burden of proof in an infringement lawsuit from the trademark holder (who would under traditional unfair competition law have to prove the association does exist) to the alleged infringer (who now has to prove that an association does not exist.) That, legally speaking, is a very big deal indeed, although it certainly does not mean that a registered trademark is not subject to legal attack, because it happens all the time.

Knowing that, the trademark registration process should now make a lot more sense.

It starts out with an applicant filing a registration application. You do not “trademark” things, technically, though everybody but Ed Timberlake and a few others occasionally uses trademark as a verb. (Sorry, Ed.) You apply to register trademarks. This is done by filling out a form online, uploading a few things, and paying a fee. Once the application is submitted, the USPTO examines it. This is done by attorneys who work for the USPTO: they are called “Examining Attorneys.”

Now here is the first thing that can cause confusion in non-lawyers and frankly, many lawyers as well. Examining Attorneys only search the records of the USPTO for prior use of the mark. They look at issued registrations and pending applications. That’s it. They do not do Google searches. They do not go to Amazon.com and look to see if anyone else is already using a similar mark for similar goods. That is outside their ambit. And while it may seem strange, there are actually really good reasons for it. They do search to see if a term may be descriptive or generic in a particular area of commerce, but that is separate from prior use.

If someone else has already registered a similar mark for similar goods and services, the Examining Attorney will reject the application on the grounds that it will cause a likelihood of confusion in the marketplace. Here’s another thing that may not be obvious: This has no bearing whatsoever on whether or not the applicant can continue to use the mark. Anybody can use any mark they want at any time unless and until somebody stops them. If the PTO denies a registration, you can go right on using the mark and in some cases, be perfectly fine. It may be (and probably is) an indicator that you should be concerned about whatever caused the rejection, but it doesn’t mean you have to stop using it.

There is a presumption in the trademark registration process that an applicant is entitled to a registration unless there is a reason why they shouldn’t get one. The two most common reasons for the USPTO to reject an application are that the mark is too descriptive to serve as a unique indicator of a source of goods, or that a similar mark is already registered for similar goods and services.

In the first case, the classic example is “APPLE.” You can’t register “APPLE” for fruit, because “apple” merely describes a certain kind of fruit. It’s nonsensical to claim that consumers associate the mark “APPLE” with your apples and nobody else’s: apples are apples. However, you can register “APPLE” for computers, because “apple” doesn’t describe computers. It’s a totally arbitrary word to apply to a brand of computers, which can (and does) form an association in the minds of consumers with a unique source of goods.

In the second case, if “Budweiser” is already registered, you can’t come along and register it again for the same or similar goods. You could possibly, for instance, register it for auto parts, assuming nobody else has. But you can’t register it for beer, not even stout beer which I am told is somehow different from lager beer which is what Budweiser beer apparently is because that’s still too close. (I’m not a drinker, if it’s not obvious.)

So, let’s put the pieces together: The applicant is entitled to a registration unless there’s a reason not to give it to them. The only things the Examining Attorney looks at are prior registrations and applications, and whether or not the mark is too descriptive. So, unless the Examining Attorney finds a prior registration or determines the mark is too descriptive, by default, the applicant gets their registration approved by the USPTO. (There are other reasons for rejection but this is about the usual process.) It then goes on to the second phase of the registration process. We’ll come back to that.

Turning to the DRAGON SLAYER mark (it is customary in trademark practice to type word marks in ALL CAPS to distinguish when you mean the mark and when you just mean the words of the mark,) MSE Media applied to register DRAGON SLAYER for goods identified as a “Downloadable series of fiction books” in June of 2018. The Examining Attorney examined the application, searched the record, found no conflicting marks and that “Dragon Slayer” was not descriptive for the goods listed, and approved the application.

Trademark filings, unlike patent applications, are a matter of public record. The filing is visible to anyone within hours or possibly a few days. It takes several months to actually examine and approve the application. During that time, it can be public knowledge that a registration has been applied for, but there are few things, practically speaking, that an interested party can do to affect the examination. (That comes in the second phase, which we’re getting to.) They can file what’s called a “Letter of Protest,” which the USPTO will look at, and, if it’s relevant to the two things the USPTO cares about, they will take it into consideration.

Note that prior use of the mark as a trademark, unless it has been registered or registration has been applied for, is not one of the things the USPTO cares about in this phase. You can send all the evidence you want that you or anyone else has been using a similar mark in commerce in association with similar goods and services. The USPTO will be largely indifferent. Evidence of prior registered use – say, for a type of goods that the Examiner may not have considered similar enough and should reconsider – is important. Evidence that the mark is descriptive in a relevant area of commerce is important. Not much else.

In the case of DRAGON SLAYER, somebody did send in a very large bundle of evidence in the form of a Letter of Protest. It contains a truly magnificent collection of random stuff related to the phrase “dragon slayer,” including, e.g., Urban Dictionary definitions which I will not go into. You can read it by clicking on the “Documents” tab of the link at the top of this post and looking at the one titled “Administrative Response.” It is 119 pages long!

However, the Examining Attorney determined that none of it was particularly relevant as to whether a) the mark DRAGON SLAYER was previously registered for, or b) is descriptive of, a downloadable series of fiction books. So a finding of “No Further Action Taken” was made and the application was approved. This normally starts the second phase of the registration process. Specifically, information about the registration application is published and the public is invited to file what are called “oppositions.”

Now we start to care about other people’s prior use of similar marks in association with similar goods. An opposition is basically a mini-trial in the USPTO (in fact, it’s conducted by the Trademark Trial and Appeals Board, or “TTAB.”) The opposing party comes in and tries to show that their prior use has already established an association in the minds of consumers or, at the very least, it’s unlikely that the mark as applied for has formed or can form such an association with the applicant’s goods. Only a party claiming actual or potential harm from the registration can file an opposition: you can’t just file one because you think the mark should not be registered.

It is important to note that an opposition based on the fear that the applicant will misuse the registration is not likely to succeed. In this case, the mark is for a “Downloadable series of fiction books.” Book titles, for individual books, in most cases cannot be registered (and can’t function as trademarks.) To infringe this trademark, someone would have to publish a downloadable series of fiction books in association with the mark. Publishing a single fiction book with “Dragon Slayer” in the title would not be an infringing use. The fact that the registrant might send Cease and Desist letters or file takedown notices or whatever regarding single fiction books with “Dragon Slayer” in the title to provide themselves a competitive advantage in the marketplace, or just to be a jerk, is not a factor the USPTO can or will consider.

In any event, the trial and appeals process can be very long and convoluted and can end up in Federal court, and is outside the scope of this post. Suffice it to say that it is in the publication for opposition phase that people with an interest in similar marks get their primary chance to complain. If no one files an opposition, or all of the oppositions which may be filed are unsuccessful, the mark is then registered and a lovely registration certificate with gold seals and everything is sent to the lucky registrant. Because, remember, they are presumed to be entitled to a registration unless there is a reason why they shouldn’t get one.

Returning to the DRAGON SLAYER application, the Examining Attorney had approved the mark for publication, which would start Phase Two. Normally the mark would be published for opposition a few weeks after the approval, and there would then be a thirty-day period for filing oppositions.

But now… the plot thickens!

The mark was approved for publication on September 27. On October 12, the application was returned to the Examining Attorney by the Managing Attorney. The Managing Attorney is the attorney in charge of a particular “law office,” which is an internal division in the USPTO. On October 18, the approval was withdrawn, which puts the application back in the examination stage – Phase One. The current status of the application is “Returned to examining attorney for further review.” Although there’s no way to know exactly what happened or why at this point, the most likely explanation is that the Managing Attorney, for whatever reason, wanted the Examining Attorney to look at the application and reconsider something.

If I were a betting man, I’d bet that the Managing Attorney looked at the application and the Letter of Protest and is concerned that “Dragon Slayer” is too descriptive and it is not reasonable to assert that consumers can form an association with “DRAGON SLAYER” as a unique source of goods. But that is merely a somewhat-educated guess.

For whatever reason, that’s where we are now: back in Phase One. Letters of Protest can (probably) still be filed, but oppositions cannot. Until the Examining Attorney issues another status update, it will be hard to know exactly what the situation is. I will update this post as events warrant.

By the way, if you appreciate my work for the arts and would like to support it, I gratefully accept donations to help cover my costs (the website, pro bono assistance for writers and other creators, and travel to cons to do educational panels.) You can make donations here:

Thanks!

-Marc

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