1. Deborah R. Gerhardt Associate Professor, UNC School of Law
Beware the Trademark Echo Chamber: Why Courts Should Hesitate Before Deferring to USPTO Decisions
Deborah R. Gerhardt
Associate Professor, UNC School of Law

2. USPTO often uses heuristics in place of Market Evidence
How much deference should judges give to USPTO trademark decisions, practices, and policies?
Chevron:
Melissa Wasserman, “What Administrative Law can Teach the Trademark System, 93 Wash. U. L. Rev (2016)
Reasons to Keep the De Novo Standard Permitting Courts to Consider New Issues and Evidence:
USPTO often uses heuristics in place of Market Evidence
Dynamic Nature of Marks and Meaning
In sum, where new evidence is submitted, de novo review of the entire record is required because the district court “cannot meaningfully defer to the PTO's factual findings if the PTO considered a different set of facts.” (quoting Kappos) Swatch v. Beehive, 109 U.S.P.Q.2d 1291 (4th Cir. 2014)

3. USPTO Trademark Heuristics
Issue
Judicial Standard
USPTO Heuristic
Consequence
Inherently Distinctive
Abercrombie or Seabrook Classification that examine meaning in the market
Availability On Principal Register + Examiner Discretion
Presumption of Validity for Early Adopted Marks that may not be distinctive
Acquired Distinctiveness
Consumer Recognition of Symbol as Source Identifier
Availability On Principal Register + Substantially Exclusive Use
Over and Under Protection
Incentivize Trademark Bullying
Likelihood of Confusion
Actual Market Presence
Presumption of Registration Validity
Registrants Get Broader Protection than Current Market Presence

5. 1. Inherent Distinctiveness Heuristic: Availability
Consequence: Examiner Discretion can lead to registration of descriptive marks without evidence of secondary meaning or generic terms. Deference can lead to rubber stamping such decisions without ever taking evidence of actual market use.
Rejecting evidence of Generic use that included two references by the TM owner and internet uses from different sources describing how to use the toy in education and how to build them.
Immediate idea of the quality and characteristics of the product. Abercrobmie
“The USPTO did not request from Plaintiff evidence of secondary meaning significant weight must be attached to this registration and this court must infer that the USPTO concluded that the marks were, at the least, suggestive.”
JFToys v. Sears, 237 F.Supp 3d 311, 330 (D. Md. 2017)

6. 2. Acquired Distinctiveness Heuristic: Substantially Exclusive Use
Consequence: Availability may lead to registration of descriptive or deceptive marks.
“It’s Hip to Be Green”
USPTO Reg. No
T'S HIP TO BE GREENGoods and ServicesIC 035. US G & S: On-line retail store services featuring household goods, clothing, shoes, furniture, bedding and accessories, bath and body products, pet supplies, supplements, stationery and paper goods, pool and spa treatments, cleaning products, electronics, lawn and garden products, air purification products.
BIG GREEN LAWN CAREGoods and ServicesIC 044. US G & S: Lawn care; Horticultural processes and turf or lawn care services, namely, providing preparation and development of turfgrass and/or soil for providing an environment that encourages improved growth attributes. 
“Big Green Lawn Care”
USPTO Reg. No
“Metagreens”
USPTO Reg. No
“Green Defense”
USPTO Reg. No

7. Registration Decisions Are Not Always Evidence of Trademark Validity.
Consequence: Principal Register will not Reflect Distinctive Marks that are Not “Substantially Exclusive” in their Field
2nd M: In the minds of the public it identifies source, not the product.
Color only marks that were not registered won 44% of the time in district court litigation.

8. 3. Likelihood of Confusion Heuristic: Presumption that Everything in a Registration is Valid Consequence: Unsupported assertions are given more weight than genuine market presence.
“With respect to the goods, the question of likelihood of confusion must be determined on the basis of the goods set forth in applicant’s application and the cited registration, rather than on what any evidence may show those goods to be.” In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992) (where registrant’s goods are broadly identified as "computer programs recorded on magnetic disks," without limitation as to the kind of programs or the field of use, it must be assumed that registrant’s goods encompass all such computer programs, including computer programs of the type offered by applicant, that they travel in the same channels of trade normal for such goods, and that they are available to all classes of prospective purchasers of those goods).
Mark: Link IT

9. Example of Likelihood of Confusion Heuristic
dramatized courtroom television show starring Gloria Allred that ran in 2011 and 2012
“We the People” Registration claims use in connection with “Entertainment services, namely, providing programs in the field of law “

10. Dynamic Nature of Marks and Meaning
Once Fanciful, now Generic. YO- YO, Nylon, Aspirin
Once Fanciful without unrelated descriptive meaning (SPAM)
Once Arbitrary or Descriptive, Now potentially Deceptive. (Green)
Once distinctive, may become functional and then distinctive again
Abandonment

11. Does USPTO Trademark Expertise Justify Deference?
Considerations:
Very few trademark issues that are pure questions of law
USPTO and TTAB decisions rely on heuristics in place of fact-finding
Dictionary definitions often are gamed by the content owners
TM matters always could benefit from non-trademark expertise, e.g. Lexicography, Semantics, Cognitive Science, Constitutional Law
Capture concerns (INTA)
Courts may bring a healthy skepticism and flexibility to the content of a registration certificate.
Look at for example, what the FTC has one.

12. USPTO Trademark Registration Process
File Application
USPTO Review Office Action = 66% File Response or fail
Publication in Official Gazette
Notice of Allowance (ITU only)
Statement of Use (ITU only)
Or . . .
Registration
3rd Party Review
Opposition = 3%
wait about 3 months
Use
Intent to Use