As is being widely reported, disgraced ex-US President Donald Trump’s TRUTHSOCIAL trademark registration application has been initially refused by the US Patent and Trademark Office (USPTO).
This may be disappointing news for those on the autocratic end of the US political spectrum. Simultaneously, it may be titillating news for those on the end of the spectrum favoring the continued rule of law in the US. However, as usual, it is also a news topic that has been somewhat overblown.
This Article will explore both the procedural and substantive arguments behind Donald Trump’s trademark registration application refusal. It will then discuss the refusal of Donald Trump’s TRUTHSOCIAL trademark registration in the context of the basic requirements for trademark registration in the United States.
What are those requirements? How did Donald Trump’s TRUTHSOCIAL registration application succeed or fail in meeting the requirements?
And what is the process moving forward for Donald Trump’s TRUTHSOCIAL registration application given this initial refusal?
The TRUTHSOCIAL Trademark Registration Application
Donald Trump’s TRUTHSOCIAL trademark registration application was, first, filed as a Section 1(b) “intent-to-use” application.
The Use in Commerce Requirement for Donald Trump’s TRUTHSOCIAL Application
What does this mean?
An intent-to-use trademark registration application is one that is filed prior to the applicant’s actual “use in commerce” of the mark in association with the goods or services claimed.
Use in commerce is one of the basic prerequisites for the registration of a trademark under US Federal law.
Roughly, use in commerce means that the proposed trademark is “used” across state lines, in association with the specific goods or services described in the application, and that a bona fide transaction has occurred.
That it, is a trademark applicant must have made an arm’s length sale to a consumer in another US state, outside of its own. That sale must have occurred in conjunction with the display or attachment of the proposed trademark.
This is a requirement for trademark registration because the United States is, of course, a confederacy of (mostly) formerly independent, sovereign colonies. State law governs much of the goings-on within states. Federal law only has jurisdiction over commerce that extends over state lines (with a variety of exceptions, not least for Constitutional Equal Protection and other disputes).
The USPTO is a Federal agency. It only has the jurisdiction to extend the benefits of Federal trademark registration to Donald Trump’s TRUTHSOCIAL mark when use in commerce has occurred and is ongoing.
Despite all of this, under the US Trademark Act (“the Lanham Act”), trademark applicants are allowed to file trademark registration applications before actual use in commerce is achieved.
This is the “intent-to-use” application as noted above.
What Is Different about An Intent-to-Use Trademark Registration Application?
An “intent to use” application does not include evidence of use. An “in-use,” or Section 1(a), application is required to include a “Specimen” evidencing the use in commerce underway prior to the filing of the application.
What sort of evidence this must be varies depending on the products or services in question. In the case of a website, blog, YouTube channel, e-commerce platform, or, in this case, a purported social media network, that Specimen evidence would usually include a date- and time-stamped website screenshot. Or series of screenshots.
In an intent-to-use application, this Specimen is filed later on in the 1 year+ process. A “Statement of Use” including the Specimen is required to be filed within 6 months of the application’s approval by the USPTO.
However, the applicant is required to include a statement of bona fide intent to use in the mark in commerce with the initial filing of an intent-to-use application.
The Goods & Services Claimed in Donald Trump’s TRUTHSOCIAL Trademark Registration Application
Donald Trump’s TRUTHSOCIAL trademark registration application claims an intent to use the mark in association with products or services in a variety of “International Classes” (ICs).
Class 009: The TRUTHSOCIAL App Itself
In IC 009, usually intended for computers and other “scientific” devices, Trump’s Application claims an intent to use the TRUTHSOCIAL mark in association with a lengthy description of a “downloadable software” product.
The Application’s Class 009 description reads:
Downloadable software in the nature of a mobile application; downloadable software in the nature of a mobile application for social networking; Downloadable software for engaging in social networking and interacting with online communities; Software and software applications to enable transmission, access, organization, and management of text messaging, instant messaging, online blog journals, text, weblinks, and images via the internet and other communications networks; computer software used to enhance the capabilities and features of other software and online software; software for accessing information on a global computer network; downloadable software via the internet and wireless devices for accessing, sending, and receiving information on a global computer network; downloadable software for computers, portable handheld digital electronic communication devices, mobile devices, and wired and wireless communication devices for facilitation of communication and data transmission in the field of social networking; downloadable software in the nature of a mobile application for use with computers, portable handheld digital electronic communication devices, mobile devices, and wired and wireless communication devices for facilitation of communication; Downloadable software in the nature of a mobile application for creating, sharing, disseminating and posting advertising; Downloadable software for geo-location based advertising and product and service promotion; Downloadable software for viewing and interacting with a feed of images, audio-visual and video content, and associated text and data; downloadable software for creating and managing social media profiles and user accounts; Downloadable software for uploading, downloading, streaming, archiving, transmitting, and sharing images, audio-visual and video content and associated text and data; Downloadable software that enables individuals, groups, companies, and brands to create and maintain an online presence for marketing purposes; Downloadable software for advertisers to communicate and interact with online communities; Downloadable software for streaming multimedia entertainment content; Downloadable software for use in taking and editing photographs and recording and editing videos; Downloadable software for sending and receiving electronic messages, graphics, images, audio and audio visual content via the internet and communication networks[.]
Quite a mouthful, eh?
This sort of “scattershot” product description is common in trademark registration applications. What it actually says is, “A social media app that you can download and use to read and say stuff.”
Leave it to trademark lawyers to come up with the more verbose alternative, right?
Class 35: TRUTHSOCIAL—Marketing! Ads! More Ads!
Donald Trump’s TRUTHSOCIAL trademark registration application also claims an intent to use the mark in association with “business and advertising services” under IC 035.
Class 35 is a very, very commonly seen IC in trademark registration applications. If you’re selling t-shirts through an Etsy e-commerce store, for example, you’d file your trademark registration application under Class 35 for “online retail store services” or some variation on that theme.
Donald Trump’s Class 35 description reads:
Marketing, advertising and promotion services; Promoting the goods and services of others via computer and communication networks; Providing online marketplaces for sellers of goods and/or services; Online service for connecting social network users with businesses; Online business networking; Online community building and digital word of mouth communications; Advertising and information distribution services, in particular, providing classified advertising space via the global computer network; Online advertising and promoting the goods and services of others via the internet; Advertising via electronic media; Dissemination of advertising for others via a global computer network; Promoting the goods and services of others by means of distributing video advertising on the internet[.]
In other words, he wants to sell stuff—his own and the stuff of others—through his app. (Bumper stickers, anyone? Who wants a bumper sticker?)
Class 38: Let’s Talk … About Truth … Socially …
Next, Donald Trump’s TRUTHSOCIAL trademark registration application claims an intent to use the mark in association with “telecommunications services” under Class 038.
Class 38 is a sort of genericized, somewhat outdated Class, descriptively speaking. If an applicant is broadcasting information on a sort of unilateral basis through electronic means, this Class covers it.
Trump’s Application requests registration for this … stuff … :
Telecommunications services, namely, electronic transmission of electronic media, data, messages, graphics, images, audio, video and information; Providing online forums for communication on topics of general interest; Providing online communications links which transfer mobile device and internet users to other local and global online locations; Providing online chat rooms, instant messaging services, and electronic bulletin boards; Audio, text and video broadcasting services over the internet or other communications networks; Providing an online community forum for users to share and stream information, audio, video, real-time news, entertainment content, or information, to form virtual communities, and to engage in social networking; Photo sharing and video sharing services, namely, electronic transmission of digital photo and video files among internet users; Telecommunications services, namely, providing online and telecommunication facilities for real-time interaction between and among users of computers, mobile and handheld computers, and wired and wireless communication devices; enabling individuals to send and receive messages via email, instant messaging or a website on the internet in the field of general interest; providing on-line chat rooms and electronic bulletin boards for transmission of messages among users in the field of general interest; providing an online community forum for users to share information, photos, audio and video content to allow users to engage in social networking; Providing online forums for the transmission of information, audio, video, real-time news, entertainment content or information among users of computing and mobile devices in an online community[.]
Because who doesn’t love a good chat room in the year 2022? Don’t get us started on the effectiveness of BBSs in the 21st Century.
Now excuse us while we step away from writing this Article to play DikuMud for a few minutes.
Class 41: A Blog by Any Other Name
Thankfully, the service descriptions begin to tighten up a bit as you scroll downward through Donald Trump’s TRUTHSOCIAL trademark registration application.
His Class 041 intent-to-use claim is fairly straightforward:
Providing on-line journals, namely, blogs featuring user-defined content; Providing a website featuring non-downloadable videos, audio, and text in the fields of entertainment, fashion, news, education, sports, recreation, training, celebrities, popular culture, current events and blogging via the Internet[.]
Class 41 is for “education and entertainment services.” We won’t opine as to which end of that spectrum Trump’s unsuccessful blog occupies.
Class 42: TRUTHSOCIAL’s Science and Technology Services (Uh-Huh)
Class 042 is very commonly used for “science and technology services.” In particular, it is the IC used for anyone providing any sort of information via a website, in any informational context. (Or lack thereof.)
Donald Trump’s TRUTHSOCIAL trademark registration applications avows an intent to use that mark in association with the follow “science” services:
Hosting of digital content on the Internet; hosting an interactive website featuring real-time delivery of data, messages, photographs, links, text, audio, video and other data; hosting an interactive website that allow users to post, search, watch, share, critique, rate and comment on messages, comments, multimedia content, videos, photos, audio content, animation, pictures, images, text, information and user-generated content via a global network and other computer and communications network[.]
This is sort of boilerplate text pasted in. It would work pretty well to describe your cousin’s Bigfoot Investigation website, too.
Class 45: Legal and Security Services
Class 045 seems incongruous for a social networking app trademark registration application. However, the ICs are broad and often include services and products you would not necessarily imagine lie under the umbrella of the name of that IC itself.
There is nothing “legal” or “security”-related in the “service” of providing a social networking internet platform for consumers’ usage.
However, this is the IC used for exactly that purpose by other registrants, including Facebook.
Donald Trump’s TRUTHSOCIAL trademark registration application similarly claims an intent to use the mark with regard to social networking services. The application’s Class 45 description reads:
Online social networking services; providing a website on the internet for the purpose of social networking; providing on-line computer databases, social networking services and on-line searchable databases in the field of social networking[.]
Who Is the Applicant in Donald Trump’s TRUTHSOCIAL Trademark Registration Application
The particular applicant filing any trademark registration application is always of note, both to the USPTO and to applicants’ own Michigan trademark attorneys.
A trademark can only be registered if the specific individual or entity filing the application is actually the “person” using the mark in commerce.
Thus, if you file a trademark registration yourself, as an individual human (say, Joe Schmoe, Jr. in Livonia, Michigan), but your Michigan LLC is actually the one using the mark to sell stuff across state lines, this is a problem.
We’ve been referring to this application as “Donald Trump’s TRUTHSOCIAL trademark registration application,” but this is not quite accurate.
The application was filed by an entity: T Media Tech, LLC, with a mailing address in Orlando, Florida but registered in Delaware.
T Media Tech is an alias of the Trump Media & Technology Group (TMTG). In other words, Donald Trump is not, himself, personally, claiming the use of the TRUTHSOCIAL mark. An LLC is.
The USPTO Rejection of Donald Trump’s TRUTHSOCIAL Trademark Registration Application
On the face of it, there is nothing wrong with Donald Trump’s TRUTHSOCIAL trademark registration application.
It’s a typical 1(b) intent-to-use application filed for a variety of services in a variety of Classes for website, blog, and app-related products and services. The political purpose of the enterprise and the notoriety of Trump is what carries the application into media headlines.
So why did the USPTO reject it?
It rejected it for the same reasons that a huge number of trademark registration applications are rejected: a likelihood of confusion with regard to prior registered marks and prior filed applications and the need to clarify some of those goods and services listed above.
TRUTHSOCIAL and the Likelihood of Confusion
Another of the basic prerequisites for US trademark registration is that a proposed mark not be likely to confuse consumers.
What Is a Trademark Likelihood of Confusion?
A likelihood of confusion arises when a proposed mark is too similar in sound and appearance and overall “consumer impression” to one that is already registered for the same or related goods or services.
Thus, a mark does not have be identical with another prior registered mark to be deemed confusing to consumers by the USPTO. It simply has to be “likely” to confuse.
This is one of the fine points that laypersons attempting to file their own trademark registration applications without the assistance of an experienced Michigan trademark attorney fail to understand, often.
Laypeople do a quick search of TESS, the USPTO’s trademark database, do not locate a registration identical to their own, and consider the deal done. TESS is a very literal database. It will turn up only results that are identical or that use identical words or spellings as the information input.
In reality, the USPTO will reject a mark for being close but not identical. If you use, for instance, dollar signs instead of the letter “S,” TESS may not return the hit in a search attempt. But the human USPTO Examiner reviewing the application will certainly make that connection and consider that dollar sign to be, in fact, an “S.”
In other words, you will not succeed in registering “Adida$” for an athletic shoe product. Nice try, no cigar.
On the other hand, you might succeed in registering “Adida$” for something entirely different, such as tool and die manufacturing components or micro-loan banking services.
Those products are not “related” to the goods and services provided by the well-known athletic apparel company, Adidas. (That said, don’t count on that protecting you from an opposition or cancellation proceeding by as well-funded a registrant as Adidas! We’re just talking about the USPTO Examiner here. )
Donald Trump’s TRUTHSCIAL trademark registration application was refused on this basis.
The USPTO Examiner found the TRUTHSOCIAL mark to be confusingly similar to a prior registered mark: THE TRUTH NETWORK.
THE TRUTH NETWORK was registered for similar services in Classes 35, 38, 41, 42, and 45.
Further, the Examiner also found TRUTHSOCIAL to be confusingly similar to the prior registered mark VERO – TRUE SOCIAL. This mark was registered in Class 45 online social networking services.
TRUTHSOCIAL and Identification of Goods of Services Amendment Requirements
The USPTO Examiner also did not favor the descriptions of the services and goods included in the application.
In some areas, the Examiner found the descriptions “indefinite” or overly broad. For example, with regard to the Class 9 “downloadable software” description (see above), the Examiner notes in the Office Action refusal that the wording is “indefinite” because it does not specify the subject matter of the downloadable software. What is it? What kind of software? What does it do? How is it used?
In another case, the Class 45 “online social networking” service description was found lacking for failure to specify an additional instance of the word “online” in relation to the social networking service described itself.
Even for trademark attorneys, this second example is a bit of an eye-roller, as the word “online” is used 3 other times within the same description.
There are a number of such issues to be addressed in Donald Trump’s TRUTHSOCIAL trademark registration application.
For the reasons described below, however, these are easy fixes for Trump’s trademark attorneys.
Is Donald Trump’s TRUTHSOCIAL Trademark Registration Application Really Dead?
This is the important part that media reports on this subject are missing.
The “refusal” of Donald Trump’s TRUTHSOCIAL trademark registration application filed by the USPTO is a “non-final refusal.”
That is, it is an initial refusal only. If Trump’s, or his LLC’s, trademark lawyers take no action in response to the refusal, then, yes, it is dead. It will be Abandoned by the USPTO. TRUTHSOCIAL will not, then, enjoy the protections of US trademark registration.
However, an initial non-final office action (i.e., USPTO refusal) is not the end of the road when a good trademark attorney is on the job.
As of this writing, new US trademark registration applications filed have a 3-month deadline to file a response to a Non-Final Office Action of this sort.
Donald Trump’s TRUTHSOCIAL trademark registration application was filed prior to this year’s rule change in this regard and thus enjoys a 6-month deadline for response.
It is difficult to imagine that counsel of record, a highly experienced North Carolina law firm, will fail to respond to the Office Action by this required deadline—unless the firm’s client, Trump and his mysterious LLC, instruct the firm not to bother.
It is always the trademark applicant’s decision whether or not to file a response to a USPTO Office Action.
However, Trump’s lawyers have plenty of time to do just that, as of this writing.
Office Action Responses: Do They Always Work?
A response to a USPTO Office Action is essentially the same sort of pleading as a brief filed in any Federal legal proceeding.
Depending upon the issues raised and the number of issues raised in the Office Action, a response may not be overly long and wordy. However, on other occasions, they can be quite long, invoking and citing not only a host of legal precedent in favor of the applicant’s argument but also real world evidence of use, non-use, consumer impression, third party trademark registrations, and so on.
Office Action responses may also utilize dictionary definitions, geographic atlas place-name definitions, and much other “source material” to argue against the Examiner’s positions.
Once a response is filed, the Examiner who issued the initial non-final refusal will read and consider the new arguments and evidence presented and make a decision whether or not to allow the application to proceed onward in the registration process.
If the Examiner is convinced by the response, the application will be “approved for publication.” That is, it will be allowed to move on to the next phase in the registration process: the Publication Phase. This is a 30-day period of time in which third party registrants and other parties in interest may also, independently of the USPTO, file Opposition proceedings against the applicant.
If the Office Action refusal does not convince the Examiner, he or she will then issue a “Final Refusal.”
And that’s a “real” refusal.
However, should this happen in this case, even then, it isn’t necessarily the end of the road for Donald Trump’s TRUTHSOCIAL trademark registration application.
An applicant, after Final Refusal, may still file a Request for Reconsideration of that final decision with that same Examiner—and/or final an Appeal of the decision onward up to the USPTO’s Trademark Trial and Appeals Board (TTAB), and, beyond that, to the Federal Court of Appeals.
Donald Trump’s TRUTHSOCIAL Trademark Registration Application: The Bottom Line
The bottom line is that Trump’s trademark registration application process is a long way from conclusion at this juncture.
As in the case of Meghan Markle’s recent trademark registration application for the term ARCHETYPE in relation to podcasting services, the media is a bit lost, here, in the purpose and process of US trademark registration.
Trump’s trademark lawyers have any number of arguments available to raise in defense of their application. It is difficult to imagine that these arguments will not, within the required timeframe, be raised.
If you are considering registering a US trademark or need to respond to a USPTO Office Action refusal, seeking the assistance of an experienced Michigan trademark attorney is the best way to maximize your odds of success.
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Noble Path Trademark Law is a boutique US law practice located in Metro Detroit and assisting entrepreneurs, solopreneurs, artists, musicians, start-ups, and larger enterprises with robust intellectual property portfolios, and others in all industries with trademark registration, trademark renewal, and Office Action refusal response matters.
We offer virtual consultations, premium customer service, and the expertise you need to maximize your odds of trademark registration success.