TM TKO has updated our Office Action research tools! You can now separately search criteria for both the trademark application that got an Office Action and for the criteria of the application that was cited by the Office as a possible bar to registration. This permits even more simple, in-depth research for specific refusal fact patterns.
For a sample, the search below identifies the relatively small number of applications for beer that faced a 2(d) refusal but ultimately made it through to registration. This search focuses on incoming responses that successfully overcame the refusal. This is a longtime bugaboo for prosecution attorneys, who see less overlap in the marketplace than the USPTO precedent recognizes.
The search yields more than eighty examples of applicants who got these sort of 2(d) refusals and ultimately moved to registration, whether due to argument alone, consent agreements, or otherwise. You can then use these as resources to find useful arguments, use select outcomes as examples, and more.