With TM TKO’s Office Action research tools, you can easily see how the Examining corps and applicant-side trademark attorneys are using Trademark Trial and Appeal Board decisions.
We will look at a selection of recent precedential decisions from the TTAB and outcomes where Examiners or applicants citing to these decisions. I focused on USPQ citations, which may under-count the decisions slightly, and may miss citations issued right after the cases came out and before a USPQ number is assigned, but it suffices for a quick read of relative citation frequency.
| Case | Decision | First Citation | Pub. Rate |
| In re Minerva Associates, Inc., 125 USPQ2d 1634 (TTAB 2018) | Allowed screenshots of software login & search screens as specimens | – 1 cite by USPTO – 4/1/2018 second Office Action – 13 cites from applicants |
Pub: 3 Reg: 8 Pending pre-pub: 2 Abandoned: 0 |
Specimen issues are common but are frequently resolved in prosecution. Even by those standards, applicants citing Minerva have been quite successful.
Specimen issues are common but are frequently resolved in prosecution. Even by those standards, applicants citing Minerva have been quite successful.
| Case | Decision | First Citation | Pub. Rate |
| Grote Industries v. Truck-Lite Co., LLC f/k/a/ Truck-Lite Co., Inc., 126 USPQ2d 1197 (TTAB 2018) | Truck light design not functional under 2(e)(5) but had not acquired distinctiveness under 2(f) | – 1 cite by USPTO – 6/14/2018 Office Action, replacing an earlier final Office Action from December with a non-final Office Action account for the Grote decision – not cited by any applicants yet |
Pub: 0 Reg: 0 Pending pre-pub: 1 Abandoned: 0 |
Functionality refusals are quite rare – a couple of hundred Office Actions in 2018 to date. It’s little surprise that this March 2018 decision has gotten little traction from either the USPTO’s examining corps or applicants’ counsel so far.
| Case | Decision | First Citation | Pub. Rate |
| In re Shabby Chic Brands LLC, 122 USPQ2d 1139 (TTAB 2017) | Design was a “simulation” of Prince of Wales’ official insignia under 2(a) | – 3 cites by USPTO – 4/12/2018 first Office Action for this principle of law (the same application on remand)
– 3 cites by applicants |
Pub: 2 Reg: 0 Pending pre-pub: 3 Abandoned: 1 |
Insignia refusals under Section 2(b) of the Lanham Act are one of the very least common types of refusals, with under 120 in 2018. Most of these relate to US or Swiss flags, so the Welsh insignia here is especially uncommon. An uncommon fact pattern in an overall uncommon refusal has generated only a handful of citations to the case, although respondents referencing it have been relatively successful.
| Case | Decision | First Citation | Pub. Rate |
| Primrose Retirement Communities, LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030 (TTAB 2016) | On evidence that registered PRIMROSE co-existed with multiple direct competitors using the same mark, overturns 2(d) citation for ROSE SENIOR LIVING | – 2,261 cites from USPTO – 199 cites by applicants – 4/26/2017 first Office Action Response |
Pub: 241 Reg: 93 Pending pre-pub: 1689 Abandoned: 571 |
What on earth is going on with the Primrose case, which was first cited almost four months after its issuance and hardly cited to at all for almost a year and a half, and, more recently, is cited constantly? In an October 2017 update, the Trademark Manual of Examination Procedure added references to Primrose to its sections about sophisticated purchasers (1207.01(d)(vii)) and third-party registration and use evidence (1207.01(d)(iii)). The case is often used to support the sophisticated purchaser principal by Examining Attorneys, and applicants’ counsel are especially likely to cite to the latter principal about third-party evidence. The uptick in citations to Primrose occurred recently enough that most of the Office Actions and Responses referring to Primrose haven’t reached a final decision.
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