Here are some resources for tracking and dealing with potentially problematic U.S. trademark applications:
@c*ckybot, which identifies and tweets book-related TM applications:
https://twitter.com/c*ckybot
An overview of trademarking issues from patent lawyer Kevin Kneupper:
https://jamigold.com/2018/05/how-to-track-and-fight-bad-trademarks-guest-kevin-kneupper/File a free letter of protest with the USPTO here:
https://teas.uspto.gov/ccr/lopLetter of protest info and suggestions:
https://thetrademarkfirm.com/trademark-protest-try-a-letter-of-protest/; https://www.uspto.gov/trademark/trademark-updates-and-announcements/letter-protest-practice-tip; and this tweetstorm by Kneupper,
https://twitter.com/kneupperwriter/status/999014876612739072Some notes of my own, based on Kneupper's tweetstorm:
A letter of protest consists of a brief factual letter, an index of evidence, and the evidence itself. You should compile this before you go to the USPTO website to begin submitting.
When you file a letter of protest, you have to check off the legal reason (click to see that part of the form) you're objecting. I filed one of these a while ago, and I wasn't sure what to check. Kneupper suggests "collecting evidence that the mark is GENERIC or DESCRIPTIVE." If you claim descriptiveness as the problem, you're claiming the proposed mark simply follows the dictionary definition of the word in question. The example he cites is "c*cky" being in a book title because the book's hero is c*cky -- the word is descriptive. If you claim genericness as the problem, you're claiming the proposed mark "describe(s) a class of goods." The example he gives is trying to trademark the word "books."
Thinking about it, it seems to me that descriptiveness is the course most authors' objections are likely take. Comparing "c*cky" to, say, "Apple" as a trademarked name for the tech company ... there's nothing particularly descriptive about the word "apple" when applied to tablets, laptops, phones and so forth; these devices are not fruitlike. You could get allusive and connect "apple" and the Apple logo (a bitten apple) to the desire for knowledge (as in the Garden of Eden) -- like, the company's devices are the gateway to all knowledge, or something -- but that's a very non-literal connection. If you write a book about a person who is literally c*cky and put "c*cky" in the title, that's much more clearly, directly, and simply descriptive ... right? Same with "forever." If you're writing a romance about how two people fall in love and stay together for the rest of their lives and put the word "forever" in your title, that word is a means of describing the book.
The evidence you submit should be concrete, factual material, Kneupper points out. His suggestions:
- screenshots of websites where the term is in already use descriptively;
- dictionary definitions;
- Wikipedia entries;
- results of Goodreads searches on the term;
- Google results for the term.
He says you should precede the evidence with a brief, sticking-to-the-facts letter and an index, with URLs, of the evidence you're including, but the index itself is not sufficient; you can't just send a list of URLs and expect the USPTO people to look them up. They want you to do that work and present them with the material.
I know from having done this myself that you need to compile the evidence into a PDF file (or a set of JPEGs?). There are page and file-size limits. The filing is free. You DO NOT need to show the proposed mark will have a personal impact on you.
Once a mark has been
published for opposition, it's too late to submit a letter of protest. Letters of protest should be submitted as quickly as possible after @c*ckybot flags the application.
