Class-Based and Keyword-Driven Comparative Research

ThorCheck is a great, unique tool for comparative research. The first iteration, and still the most commonly-used, helps you identify active, use-based registrations for the same mark for two different sets of goods, e.g. trailers and trucks. In re Thor Tech, Inc., 113 USPQ2d 1546 (TTAB 2015). It saves hours or even days of manual research, and has helped hundreds of applicants prevail over difficult related-goods refusals.

The original ThorCheck Goods and Services tool is still your best option for most goods/services comparative research, but was less adept at two kinds of searching.

The first was for class based comparisons – finding overlap between, say, a food in Class 29 or beverage in Class 32 and a restaurant service in Class 43, or between a pharmaceutical in Class 10 and a medical service provider in Class 44. Any evidence of that type of overlap is potentially valuable, and ThorCheck’s emphasis on individual goods or services didn’t allow for easy “general” comparisons like this.

The second was for highly varied goods and services, like software – give the same description of a hospital-focused SAAS to ten different trademark lawyers, you’ll get ten different descriptions of services.

The new Custom option solves both sets of problems.

Class-Based Comparisons

Setting up a custom search is easy – just pick one class in First Party Trademark Criteria and the other in Second Party Trademark Criteria. As always with ThorCheck, your results are limited to active, use-based registrations.

Exporting a summary chart and TSDR status and title copies is as easy as always; just tag relevant results and export to Word or Excel, or select up to 100 records to get TSDR status and title copies at a go.

What if you’re the senior party, and want evidence that cosmetics are related to more industrial chemicals? Just pick Class 1 and 3 respectively, and change the Evidence option to “Similarity,” as shown below.

Keyword-Driven Goods and Services Comparisons

Custom goods and services ThorCheck search strategies look a little more complicated, but they are conceptually simple: come up with two sets of search strategies that identify either different (Dissimilarity option) or overlapping (Similarity option) universes of marks. ThorCheck will put all the pieces together, lining up identical marks with either different owners (Dissimilarity option) or identical owners (Similarity option).

Let’s do an example. Say your client offers industrial software for running oil, gas, and mining operations. A prior registration for software in the HR space has been cited as a bar to registration, with the Examining Attorney taking the position that part of running industrial operations is dealing with HR issues. You plan to argue channels of trade and that the users of the software are different, but would love to have evidence to attack the relatedness of the goods directly. ThorCheck can provide it. We want to limit both First Party and Second Party criteria to Class 9 and 42. On the First Party Criteria, we want to pair software-related keywords with keywords like mining, oil, gas, and industrial. One the Second Party Criteria, we want to pair those same software keywords with either the phrase “human resources” or the term “HR.” The search strategy looks like this:

The results speak for themselves – dozens of examples of just this sort of overlap. A sampling of the representative results are attached, and it’s only a fraction of the evidence surfaced by ThorCheck. (The Word formatting doesn’t carry over to the blog great, so some details have been truncated for readability.)

Owner	Goods/Services	Mark	Mark	Goods/Services	Owner
Illinois Tool Works Inc.	009 business management software, namely, project management software for truss fabrication projects in the business component industry	HOMEBASE Reg: 2803070	HOMEBASE Reg: 4694369	009 042 software for human resources and labor management for employee communications, scheduling, task management, payroll, hiring, accounting, alerts, messaging, compliance, timesheets, reviews and feedback (…)	Pioneer Works, Inc.
Epicor Software Corporation	009 computer software for use in the made-to-order or custom manufacturing industry (…)	VISTA Reg: 2895370	VISTA Reg: 5387674	009 computer software for use in human resource management, in maintaining personnel and benefits records, and in processing payrolls	Personnel Data Systems, Inc. DBA PDS
Rosemount Inc.	037 042 technical support services, namely, troubleshooting of industrial process control computer software problems; installation of computer software for industrial process control systems	SMARTSTART Reg: 3544081	SMARTSTART Reg: 4969661	038 042 (…) application service provider (…) in the fields of (…) human resources, (…)	Smartstory Technologies, Inc.
TSI Incorporated	009 computer interface units and computer programs for use with gas or liquid flow measurement apparatus (…)	TSI Reg: 3651680	TSI Reg: 4096817	009 041 educational computer programs (…) used to teach persons (…) human resources (…)	NACD, LLC
Advanced Digital Data, Inc.	009 business management software that allows customers (…) to check their account status (…) in the petroleum products industry	SMARTCONNECT Reg: 3124058	SMARTCONNECT Reg: 5770389	042 provision of cloud computing (…) services (…) in the fields of payroll, tax, compliance, human resources (…)	ADP, LLC
Carrier Logistics Inc.	009 computer software for freight management in the transportation industry	FACTS Reg: 3074116	FACTS Reg: 5645276	042 (…) on-line non-downloadable software that allows consumers to manage human resources information, (…)	Criterion Inc.

Please enjoy our new class-based and keyword-based research options in ThorCheck, and keep the success stories coming! We love to hear how ThorCheck has helped your practice. Also, please tell your fellow trademark attorneys – word of mouth recommendations mean a lot to us.