TM TKO is excited to announce the launch of its Office Action research and watching tools: free-text and issue-based searching in more than ten million Office Actions and Office Action Responses.
What can you do with Office Action research? Quickly and easily see how other applicants successfully navigate issues that you aren’t as familiar with, find model responses, find the types of arguments that your Examining Attorney tends to like, identify reasoned decisions that are far closer to your facts than the available TTAB decisions, see how other attorneys are citing to a particular case, see the types of evidence others submit in response to a type of refusal that you are facing, and much, much more.
To access these tools, go to the “Search” menu. You will see two tabs, “Trademark” and “Office Action.” “Trademark” provides the usual list of application details, while “Office Action” will provide direct links to Office Action documents. In either type of search, you can construct complex Boolean searches from over sixty “Trademark Criteria” fields and add Office Action-related search criteria like free-text search, issue, and document type, allowing you to drill into prosecution histories in a way that was never possible before.
You can also quickly and easily set up a 2(d) citation watch to see when your clients’ marks are cited as bars to third-party applications – key points where you can inform your client and possibly apply extra pressure on the applicant, like a demand letter. To set it up, go to “Watch,” then “New,” then “Office Action.” You can put your information in either the “Correspondent Email” or “Attorney of Record” fields in “Trademark Criteria,” select “Issue Type” and “Section 2(d)” in “Office Action” criteria, select the “Cited Applications” radio button, and you’ll be off and running!
Office Action watching can also really help with business development. Finding applicants who face Office Actions without attorney representation is simple: set up a new Office Action watch, select “No” from “Attorney Representation” in the “Trademark Criteria” section, pick any kinds of issues you want reported (or all of them) from the “Issue Type” selector in “Office Action” criteria, and select the “Reference Application” radio button, and you will see new outbound Office Actions to unrepresented parties. You can focus on key markets by adding extra criteria, like the geographic location of the applicant in the “Owner Addresses” field or by targeting Madrid Protocol applicants by limiting to the 66(a) in the “Current Filing Basis” field, both in “Trademark Criteria.”
If you are at the INTA Annual Meeting, please drop by the booth for a quick demonstration, and bring a friend! We’re in Booth 255, all the way on the right towards the front.