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May 24, 2018

How to Track and Fight Bad Trademarks — Guest: Kevin Kneupper

Man holding out fist with text: Trademark Troll? How to Fight Back

Heads up: You’re going to want to bookmark this post. *smile*

A few weeks ago, I wrote about #cockygate, which highlighted a few of the mistakes made by an author attempting to trademark the word cocky. The worst issue is that she acted like she owned the word, when in fact, trademarks only allow the holder to prevent others from using the word in a way that would deceive others about the source of a product or service.

Although RWA and a few lawyer-heroes are on the case to dispute that trademark, other trademark trolls have been following in her footsteps, seeing what they can get away with. Those following the issue have already fought back against trademark applications for the words rebellion (which attempted to lay claim to the word for almost every product on the planet) and LitRPG (attempting to trademark a whole book genre?).

In other words, trademark problems are here to stay in the publishing world for all authors of every genre, whether we self-publish or have a publisher. But we don’t have to play along. *smile*

Writers Can Fight Bad Trademarks

Just yesterday, a bizarre story spun across social media about a trademark application for the word forever in relation to fiction for books, ebooks, and audio books. The author claims she didn’t authorize the application, but her agent (who also acts as a lawyer) now says her client is canceling the application anyway. So, yay?

Worried about bad trademarks? @kneupperwriter and @cockybot are here to help! Click To TweetRegardless of whether said author and agent had a costly miscommunication (given the filing fees) about what the author did want trademarked, or they’re backtracking after the swift backlash, the hubbub proved that the writing community has learned from #cockygate.

We now have the means to watch over trademark applications and question them before they’re approved by the U.S. Patent and Trademark Office (USPTO), which means they’re much easier to fight.

Today, we’re going to dig into:

  • the trademark process,
  • how we can catch bad applications early, and
  • how we can fight a bad trademark application—with special help from #cockygate hero, author/retired lawyer Kevin Kneupper!

What Is the Trademark Application Process?

One thing to keep in mind is that the overworked U.S. Patent and Trademark Office tends to approve most applications and lets the courts figure out which ones don’t make sense later. That is, the granting of a trademark implies nothing about its legitimacy.

That’s good news for the fight against the already-granted cocky trademark registration, but as I mentioned above, it’s easier to fight bad trademarks earlier in the process.

Here’s the process to understand why:

  1. Someone who wants to file a trademark works with a lawyer to complete a trademark application.
  2. The USPTO reviews the application to check for completeness and assigns an application Serial Number.
  3. The USPTO’s examining attorney checks for issues with the trademark.
  4. During this several-month-long examination time, others can file a free Letter of Protest (which we’ll get into with Kevin below).
  5. If the examining attorney doesn’t object to the application (which, due to the overworked issue above, tends to happen if no one files a Letter of Protest), the USPTO will Publish the trademark.
  6. After publication, any party who believes it may be damaged by registration of the mark has 30 days to file an Opposition to Registration. (Opposition proceedings are like mini-trials to prove the USPTO made an error, and a lawyer may be necessary—that is, this process is less likely to be free or easy.)
  7. If no one files an opposition, the USPTO will Register the mark. (Even once it’s registered, a Petition for Cancellation can be filed, which is what our hero Kevin filed against the cocky trademark, but it requires the help of a lawyer.)
  8. …and then more legal stuff to keep the registration in effect.

How Do We Catch Trademark Applications Early?

An easy—and effective—way to hear about trademark applications as soon as they receive an application Serial Number and start the examination process is to follow a bot on Twitter. One of the best innovations to come out of #cockygate is @cockybot.

Every fiction author should follow @cockybot on Twitter (or a sister bot like it) to get notifications of relevant trademark applications. If you don’t have a Twitter account, bookmark that link and check it regularly.

As CockyBot says on its website:

“CockyBot is a Twitter bot that scans the US Patent and Trademark Office’s database for recent applications to register trademarks relevant to authors of fiction. … Initially – as the bot’s creation was inspired by #cockygate – its focus was on romance novels, but its search has now expanded to include other genres of fiction as well…

The bot searches for active applications for trademarks or collective marks containing relevant terms in the description of goods and services covered by the mark. The search is limited to applications with classes that cover books, ebooks, novels, and short stories…”

CockyBot has shared its code, so anyone can create a sister bot with different search terms. Cool, right? *smile*

How Does CockyBot Help Us?

CockyBot’s notification tweets on Twitter include:

  • Either the wording “an application to trademark X was just filed” (Step 2 above) or “an application to trademark X was just published for opposition” (Step 5).
  • Links to the application summary and the full set of application documents from the USPTO database.
  • Link to results of a search on Amazon for the trademark term for easy evidence that the terms are too generic or descriptive.
  • List of keywords in the application (fiction, short stories, novels, publishing house, specific genre, etc.).

What Do We Do If We See a Problem Trademark?

What do we do if we see a notification that will negatively affect us now or in the future?

Let’s check in with #cockygate’s author-lawyer-hero for his expert advice on how to file a Letter of Protest with the USPTO if you see a trademark you think is illegitimate (on @cockybot or otherwise). Like us, he’s coming from a writer’s perspective, but the same steps would apply to any industry.

Please welcome Kevin Kneupper! *smile*

*****

How to File a Letter of Protest with the USPTO

By Kevin Kneupper

If you haven’t followed #cockygate, @cockybot is an account designed to automatically flag trademarks that may apply to novelists so they can look and see if they’re crazy. It’s the first line of defense against trademark trolls—a twitter account that tells us what’s filed.

Which begs the question: If you see a crazy trademark, what do you do?

There are many options, but most involve lawyers. Here I discuss the cheapest one (free) and the easiest—a Letter of Protest.

What’s a Letter of Protest?

A Letter of Protest is basically just a citizen letter than can be sent to the Patent and Trademark Office to offer materials to be considered as to a trademark.

Will a trademark application negatively affect you? Here's how to protest... Click To TweetThe PTO has a short guide on what to do with Letters of Protest, and you will want to read it if you’re filing one. A more lawyerly guide can be found in the Trademark Manual of Examining Procedure.

So you may be asking yourself: This is going to be really complicated, right? I have to write some lawyer letter to the government?

Not really. You have to write a letter and collect materials (basically the same thing you would do in a pissed off Twitter thread).

What Isn’t a Letter of Protest?

In fact the letter doesn’t matter all that much—it probably isn’t going to get forwarded on to the person who is actually examining the trademark. It definitely won’t if you start ranting or whatever.

(Note from Jami: Click on images to see full size. Newsletter readers, click through to the post to see all the images.)

See also:

If the Letter Itself Isn’t Important, What Is Important?

What you want to focus on is collecting evidence that a trademark is generic or descriptive. Only certain issues can be raised in a Letter of Protest—and these are likely the ones where a citizen could actually achieve something with it.

What do those mean?

  • If it’s descriptive, it’s a dictionary-type meaning—i.e. “cocky” heroes in a book.
  • If it’s generic, it’s something used generally to describe a class of good—like trademarking “books.”

For more about what it means for a trademark to be distinctive, check this Wikipedia article.

Here’s a description of the types of things you can submit to the PTO to consider on these issues: printed out websites showing the generic use by others, dictionaries, etc.

Wait, What Do We Have to Do?

That all sounds complicated, but what are you actually doing?

  1. You’re writing a letter.
  2. You’re printing PDF screenshots of some websites.
  3. You’re writing an index of those sites.
  4. And you’re uploading a PDF onto an easy to use website.

What Happens Next? An Example to Follow

Here’s an example of the end result of this—the Letter of Protest that was filed to the “LitRPG” trademark (and that may have kept it from issuing). Click to see what was sent from the PTO to the examiner.

See a sketchy trademark application? File a protest with these 4 steps Click To TweetNote first that there is no letter from anybody other than somebody else at the PTO. Why? Because they wall off the examiner. So if you make your letter some big rant, don’t bother—it’s just going to get deleted and only the materials you attach will be sent.

Note next that there is an index on page 2. They like you to do this. This example will help if you’re doing one. You just list out what you’ve attached and describe it. Provide URLs, and tell them what you are attaching.

And then if you look at the materials attached, they are a good guide to the kinds of things you could include. Searches on Amazon, Goodreads, etc. showing generic/descriptive use of the term. Wikipedia type materials explaining what it is and how it’s used.

So not too hard. Note that you should not go over 75 pages of attached materials.

What happens once you send it? The materials get sent to the examiner, and they take a look.

If it’s some product they’ve never heard of, they now get some background on how the mark is actually being used generically / descriptively in the industry. You’ve also put up a flag.

When Can You File a Letter of Protest?

You need to do it before publication of the trademark. And you want to do it as soon as possible. There are some exceptions but this is generally going to be true.

“Publication” is what happens after the mark has been examined. It starts a clock where people can file an “opposition” to the trademark.

Example: Filing a Letter of Protest

Let’s take an example from another field: the costumed rodent industry.

I present to you a recently filed trademark titled “Be The Hamster,” covering the use of the phrase for costumed mammals as well as human-powered snow cone machines.

As a side note, please do not challenge “Be The Hamster.” I discourage this both because in my learned opinion that is likely a valid mark, as well as because there is nothing I would like to see more than everyone making their snow cones by running in giant hamster wheels.

If you would like to take a short break from learning about trademark law to watch someone running in a giant hamster wheel to make a snow cone, you may do so here:

Step 1: Notification from Twitter Bot

So let’s say “Be The Hamster” comes up on HamsterBot, the trademark bot for the costumed rodent industry. You are in an uproar. This phrase is used throughout the human-powered food industry. Slurpees, hot dogs, vegetable slicers—all have used the term for their giant wheels.

And worse than that, now “Be The Hamster” is covered for virtually every small mammal’s costumes. Rats, kangaroos, wallabies, gerbils and the like—the entire industry uses this phrase when putting adorable costumes on them and forcing them to make snow cones.

Step 2: Check the Trademark Status

So you want to file your Letter of Protest. First thing to do is run a trademark search and see if it’s been published:

You type in Be the Hamster, and you go click on the results. Note the highlighted part: a serial number, not a registration number.

Compare this to one that has already been published: Hamsters With Moustaches. Note here the highlighting—for this trademark, the database shows a publication date. Too late, sorry—you cannot file a Letter of Protest or put a moustache on your hamster.

Step 3: Prepare the Letter of Protest

If it hasn’t been published yet, you’re good. Next step?

Write up a short letter. Don’t worry about what you write too much.

“Dear Sir or Madam, my name is (x), a concerned citizen. I believe the trademark (y) is too generic and descriptive to issue. Attached are materials for the examiner’s consideration.”

Prepare your index. Attach your materials. Letter, index, materials, in that order in the PDF. Double-check everything by going to this web page and reading through it.

Step 4: File the Letter of Protest

Now you go to the website where you file it. Enter the serial number.

This will start you through a process where you go through various pages that contain explanations on what to do next.

For example, an excerpt from page 2—select the legal grounds for your letter. Probably mark is generic and mark is merely descriptive.

On page 3 you upload your PDF and describe it.

I didn’t go further because of how much I really want to see those kangaroo/hamster/rat/people-powered snow cones. But the pages have lots of guidance on what to do.

And that’s pretty much it! The examiner will get the materials you sent and consider them.

So now if you see something on @cockybot—write your letter! Do some tweets about it, just like I did with my petition. People will probably help you search. Stop trolls before they start!

(Note from Jami: Updating with these additions from Kevin…)

@CockyBot Tool to Coordinate Efforts:

Very useful update from @cockybot so now we can make sure we don’t file overlapping Letters of Protest: (CockyBot Tool Link)

One thing I would say is that please try to coordinate so that only one Letter of Protest gets filed! I talked to a “merch” group that files these regularly, and they said the PTO has told them that it’s bad to have multiple ones getting filed.

Basically can get them all flagged as spam if there are a ton of people all protesting at once. Best to start a thread, get everyone in there, and one person files the best evidence under the page limits.

Good Example of a Letter of Protest:

This is a very good example of a Letter of Protest for anyone thinking of filing one – thank you to @MerrickGreenVM who clearly put a lot of work into fighting two trademarks (The Destroyer and Tamer)! (Letter of Protest Example Link)

Some examples to look at from @RickGualtieri‘s Letter of Protest – he got them from Goodreads searches with the publication dates listed.

*****

Kevin Kneupper is a writer, screenwriter, and retired lawyer. He’s the author of novels such as the bestselling They Who Fell series and Argonauts with over 60,000 copies sold.

The webcomics he’s written include Wizard School and the illustrated poem The Night the Power Went Out. Relevant to #cockygate, he’s also a retired patent litigation attorney, now in Los Angeles, California.

Twitter @kneupperwriter | Facebook | Goodreads

*****

About They Who Fell:

They say that long ago, there was a rebellion in Heaven. That an army of angels sought to seize the throne, and were cast down into the pits of Hell in punishment. But there’s been another uprising, and another Fall. Cast down to Earth, the rebel angels ravaged the globe in an orgy of sin and violence as they indulged in their newfound freedoms. Their new home is the Perch, a black, towering monstrosity that blights what’s left of the New York City skyline.

Life inside the Perch means you watch your tongue, if you’re a servant. Jana has lived there since she was a child, and now she’s found herself thrust into the middle of angelic politics. Some of them want to torture her, just for the fun of it. Others say they want to protect her. And Rhamiel, a charismatic and powerful angel with one of the few faces that wasn’t burnt and scarred by the Fall, is relentlessly pursuing her affections.

Life outside can be just as dangerous. Strange things fell with the angels and wander the countrysides. The roads are filled with Vichies, cringing humans who’ve thrown their lot in with their oppressors and won’t hesitate to take advantage of the weak. But some are still fighting, including William Holt. He leads a small cell of fighters, searching for a way to strike back against the angels without getting themselves killed in the process.

Why did the angels fall? How will humanity survive when its guardians have turned against them? And can love between an angel and a human redeem them?

Available at Amazon: Kindle, Paperback, and Audiobook

*****

Thank you for being so generous and sharing your expertise, Kevin! This is definitely a post for us all to bookmark, as we never know if we might need it in the future. *smile*

(Some material in this post was taken from a Twitter thread with Kevin’s permission.)

How familiar are you with trademarks? Does this post help clear up a bit of the process? Do you have any questions about trademark troll issues? Do you have any questions about how to file a protest?

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What do you think?

11 Comments on "How to Track and Fight Bad Trademarks — Guest: Kevin Kneupper"

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[…] We now have a process to prevent future trademark trolls from succeeding! […]

Sparks of Ember
Sparks of Ember

Very informative. Thank you.
Maybe I’m missing something but it looks to me like the LitRPG trademark *DID* get issued despite the protest?

Laura Wilson-Anderson
Laura Wilson-Anderson

I learned a lot from this – fantastic post – but more than anything, I want to BE THE HAMSTER. 🙂

Piroska
Piroska

Thanks for the very informative article! I’ve been following the whole thing from the beginning, and am so impressed with the writer and reader communities, lawyers (like Kevin), and the sheer volume of people that remain vigilant in this tm fiasco. Hopefully, what’s transpired these last few weeks will be a deterrent to other authors who think they can quietly slip in and trademark a ridiculous word.

Deborah Makarios

Yay for shared code! Sharing is caring 🙂

Peter Perdian

Excellent! Thanks for posting this.

Clare O'Beara
Clare O'Beara

Thanks.

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