This blog post takes a statistical look at the foreign equivalents doctrine, and how it influences examination outcomes in 2(d) refusals. In particular, I wanted to compare refusals where the Examining Attorney based the refusal on the foreign equivalents doctrine against Office Actions that did not raise the foreign equivalents doctrine but did emphasize that one or more terms in the mark are synonyms.
I looked at both 2019 and 2018 data, since so many of the 2019 applications have not made their way to a final decision yet.
Foreign equivalents refusals tend to result in a higher rate of refusals than “synonym” refusals. Roughly 10% more applications that had a foreign equivalents issue raised were refused in 2018 vs. “synonym” refusals. On a much smaller data set, the outcomes are much more closely equivalent in 2019, but outcomes are still worse for applications that receive a foreign equivalent refusal.
It’s also interesting that “synonym” refusals are just less common than “foreign equivalent” refusals – foreign equivalent refusals are about 5x more common than “synonym” refusals. Why? From dipping into specific examples, it appears that a decent percentage of the “synonym” refusals are not focused on the shared term in the mark – they’re the Examiner noting that an additional term, often weaker or descriptive, is essentially synonymous and so not sufficient to differentiate the two marks.
To see if I got different results, I restricted the search to only instances where there was a 1-word mark on each side of the refusal. (This is just space-delimited, so I’m sure it pulls in some compound marks, but it’s close enough.) This dropped the data set dramatically, especially for “synonym” refusals.
I expected the abandonment rates to be higher here, since these are one-word to one-word comparison. It was higher, a bit, for foreign equivalents, but perhaps not as much as I expected – maybe the inclusion of articles in some foreign languages tilted the multi-word comparison rates a bit higher. On the “synonym” refusals, these were if anything overcome at a higher rate than multi-word terms, supporting the hypothesis above that synonym-related refusals are most likely to matter when it is a tacked-on, secondary word (like MVD ANALYSIS vs MVD ASSAY) that is the synonym than a synonym-based comparison of the strongest term in a mark (like BOBCAT vs. LYNX).
Don’t forget to take advantage of TM TKO’s full set of indexed, text-searchable USPTO trademark prosecution histories to find comparable refusals – and successful responses! – for your Office Actions, whether you are facing issues related to foreign equivalents, synonyms, or any other prosecution hurdles.