The vast majority of “law” created in the trademark space is made via ex parte examination by the US Patent & Trademark Office. There have been over nine million Office Actions and Responses sent to and from the USPTO and trademark professionals, compared to only some 850 citable and 11,600 non-citable decisions from the Trademark Trial and Appeal Board, and a similarly small number of federal and state cases.
This June, TM TKO is revealing tools that will let you tap this huge body of Office Actions and responses. This series of blog posts will explore situations where the power of Office Action search can help you be a better lawyer.
Let’s consider a situation where your client, a craft brewery, has applied for the shape of a tap handle that it plans to use in bars. The design consists of a five-pointed star. The Examining Attorney has refused the mark as ornamental. How do you move forward?
Currently, you’re limited to poking around on TSDR in the hopes that you run across an application that raised a similar issue. With TM TKO, you can skip all the guesswork and focus right in on the most relevant prior Office Actions, and identify model responses. You can even limit the results to applications that eventually moved on to publication, indicating that they overcame the issues raised by the Examining Attorney.
Here’s what we see – a set of results focused on exactly the sort of issue your client faces.
The first result is the prosecution history for the following tap design:
In an Office Action issued in 2011, the USPTO preliminarily refused registration on the grounds that hexagonal designs were common or basic in the industry, and thus likely to be perceived as ornamental or otherwise non-distinctive. Counsel for the applicant, Charles Bacall of Verrill Dana, LLP, submitted a lengthy response arguing both that the design is inherently distinctive, differentiating it from the evidence provided by the Examining Attorney, and arguing in the alternative that the mark has acquired distinctiveness based on considerable sales figures and supporting affidavits from industry experts. It’s a perfect model to start thinking about and planning a response to your client’s Office Action. Despite the excellent arguments, the Examining Attorney would not yield, and the mark was registered on the Supplemental Register – also a useful data point in advising your client about the chances of success and the best path forward. A 2(f) claim was accepted in a subsequent filing for the same mark, and the mark is now protected on the Principal Register, Reg. No. 4,872,679.
Today, not only does the tap handle design a registered trademark that helps drinkers identify Allagash Brewing Company beers from across a bar, the company even sells tap handles from its online company store. You can buy one for your home pub at https://shop.allagash.com/collections/tap-handles.
Over the coming days, we will continue to explore more situations where Office Action and Office Action Response searches can help you do your best work for your trademark clients.