Author Archives: TM TKO

Slow Examination & Petitions to Make Special

The USPTO is currently examining new applications at a much slower clip than their historical norm. Rather than expected initial examination within about 3 months of filing, now, by the Office’s own data, it’s at least 7.5 months. That time is probably overly optimistic, since a new application filed today faces an extra 7.5 months of backlog between it and first examination.

Source: https://www.uspto.gov/dashboard/trademarks/

The Paris Convention provides US applicants 6 months in which to file internationally and claim the benefit of their US application, and this ends up being a de facto filing deadline for many applications filed via the Madrid Protocol. Applications filed through the Madrid Protocol provide substantial benefits to applicants, including comparatively cheap filings and convenient renewals and assignments. However, registrations issued via Madrid are dependent on the registrant’s home country application(s) or registration(s) for 5 years.

As we know, clients do not always select marks with completely clear paths towards registration. Since it’s now taking way longer for applications to receive an initial examination than the 6 months provided by the Paris Convention, what’s an applicant to do? File via Madrid with some uncertainty? File direct in-country applications?

The USPTO does have a mechanism to accelerate examination. A Petition to Make Special costs $250; if granted, it moves an application to the front of the line for examination. Per TMEP § 1710 – 1711:

A petition to make “special” must be accompanied by: (1) the fee required by 37 C.F.R. §2.6; (2) an explanation of why special action is requested; and (3) a statement of facts that shows that special action is justified. The statement of facts should be supported by an affidavit or declaration under 37 C.F.R. §2.20.

Invoking supervisory authority under 37 C.F.R. §2.146 to make an application “special” is an extraordinary remedy that is granted only when very special circumstances exist, such as a demonstrable possibility of the loss of substantial rights. A petition to make “special” is denied when the circumstances would apply equally to a large number of other applicants.

The most common reasons for granting petitions to make “special” are the existence of actual or threatened infringement, pending litigation, or the need for a registration as a basis for securing a foreign registration.

The Office provides minimal guidance on when Petitions will be refused.

The fact that the applicant is about to embark on an advertising campaign is not considered a circumstance that justifies advancement of an application out of the normal order of examination, because this situation applies to a substantial number of applicants.

The “need for a registration as a basis for securing a foreign registration” is close, but it’s not quite what we need here. You technically don’t need a US registration to survive the Madrid pendency period, provided that you can stall out an application at the USPTO long enough. What we want the quick US examination for is really certainty.

Seeing how these requests turn out is a perfect job for TM TKO’s prosecution research tools. Go to Search and then Office Action, and we can look for documents that have both the phrases “Petition to Make Special” and “Madrid Protocol.”

This finds more than 75 documents. Some of these relate to Petition attachments that use relevant keywords, so we then tweak the search to screen those out, and end up with about 65.

Petition Decision YearGranted*Denied
201530
201670
201760
201870
201920
202080
202185
2022
*If the Petition was specifically granted or was just examined really quickly thereafter, I counted it as “granted.”

What’s up with the refusals in 2021? These start in July 2021, and the refusals all have some variation of the following:

Petitioner states within the application the need to secure a foreign registration for the above mark. Petitioner omitted the required supporting evidence, e.g., proof showing that a foreign intellectual property office requires a U.S. trademark registration in order to submit a trademark application in that country (…) from the petition.

This is fairly wild. None of the prior petitions from 2015 – 2021 had any evidence whatsoever, and some of these were filed by the exact same attorney using the same request text that had been granted before, and granted dozens of times. It’s dumb that a Petitioner would need to provide — what, a copy of an excerpt of the Madrid Protocol text?? — to the Office for the Office to recognize that the Protocol requires a home country app/reg for the dependency, since the USPTO’s own rules enforce that exact same requirement. Nevertheless, that’s apparently exactly what applicants out to do going forward.

TM TKO Improves ThorCheck Comparative Research

Building on the clearance search improvements announced in early May, TM TKO is excited to bring similar benefits to its innovative ThorCheck® suite of comparative research tools.

In the Goods & Services Similarity tool, you will see three options under “Strategy.” The default, “Conceptual,” allows for broader matching based on AI-driven similarity analysis. It thrives even with uncommon or hard-to-describe goods or services strings. “Co-occurrence” takes a somewhat narrower look, great for fine-grained comparisons. Last, “Exact” matching is the most limited. For most searches, “Conceptual” will provide the best range of results, but all options have their place and can help you build the best possible set of evidence to support your arguments.

If you have any questions about this or anything in the TM TKO platform, don’t hesitate to grab a time to talk!

TM TKO Announces Clearance Search Improvements

TM TKO is proud to announce a sweeping new round of innovations in its automated, in-depth clearance tool. These improvements focus on goods-and-services comparisons.

First, we have added an entirely new way of comparing key concepts between different types of products and services. Driven by leading-edge artificial intelligence, these comparisons better cut through the noise to highlight risks across classes.

Second, there is a dramatically improved classifier. In the enhanced goods and services selector tool, you will see class information and whether the description is in the USPTO’s Trademark ID Manual, helping you select the best and most accurate set of descriptions for your search.

You will see benefits from the new classifier in substantive search outcomes, too. Newly filed applications with incorrect classifications will take into account both the applicant-assigned class and the “correct” class from the classifier, upping scoring accuracy and search quality on even accidentally or intentionally misfiled applications. You will see similar benefits in the scoring of older registrations where the “correct” classification for the relevant goods or services has changed since the registration date.

How will these changes impact the appearance of your report? The most conceptually-related goods or services will score substantially higher than before in the table of most reports. You will also see these results visualized further to the right in your results scatterplot.

Finally, we are retiring the “retail” and “software” tabs in the goods-and-services selector for the Knockout tool. Now, a search for a mark for services like “retail shoe store services” will do an excellent job highlighting related products and services without the need for either the old retail tab or putting in multiple descriptions of goods or services. We have already updated existing searches and watches that used those tabs to appropriately take advantage of the new methodology; you won’t need to do anything.

We’re thrilled to have these improvements integrated into our system, and hope you find them as exciting as we do!

Roman Branding

Your author has been listening to podcasts while helping TM TKO prepare some exciting new features (hopefully out really soon! more here shortly), especially Mike Duncan’s History of Rome.

Inspired – for better or worse – I did some research on how frequently marks containing famous Roman figures pop up on various trademark registries. I limited the search to the more prominent kings, consuls, and early emperors of Rome, so this isn’t close to an attempt to find a full cultural footprint. I definitely haven’t taken into account any language equivalents, either, so this is probably both over-and-under-inclusive in non-primarily-English jurisdictions.

JurisdictionActive Count
USA694
Canada183
Mexico705
EU658
France392
Germany353
Spain531
UK768
Australia185
New Zealand52
Reflected Roman glory

The sheer range of products and services to which these ancient, still somewhat-known names have been applied is amusing in its incongruity. A few fun ones, selected at random:

SULLA for bath towels? Sure! Who wouldn’t want the same sort of fluffy comfort that the dictator may have used to dry off the blood of Jugurtha, the Cimbri, the Socii, the Athenians, or, oh, the Romans?

How about TIBERIUS for cigars? After all, why not get your nicotine from the “gloomiest of men“?

ROMULUS for a variety of guns and weapons does seem pretty on-point, though; it’s hard to murder your brother, rape the Sabines, and endlessly war with your neighbors without some armaments.

Sadly, there are no filings for GRACCHUS or GRACCHI for any agricultural products or services, or property reallocation services, but there is a WIPO-based registration for pharmaceuticals and beverages. Perhaps you can talk a client into adopting a mark inspired by these under-commercialized historical demagogues.

Re-Examination and Expungement under the TMA: a Very Early Look

The Trademark Modernization Act created two new ex parte procedures – re-examination and expungement. To oversimplify slightly: the former is intended to correct botched or incomplete examination; the latter is an ex parte version of a non-use cancellation action.

The Office Actions generated by these new procedures are unusual in that they have short turnaround times — 3 month response deadlines, extendible once for 1 month. Unsurprisingly, given the current delays the USPTO is seeing across the trademark landscape, progress is slow.

# Filed# Deficiencies# Office Actions# of Registrant Responses
Dec. 2021
Re-examination
Expungement

3
5

0
0

3*
1

0
0
Jan. 2022
Re-examination
Expungement

7
15**

2 (2 responses)***
1

1
1

?
1****
Feb. 2022
Re-examination
Expungement

10
6

0
0

0
0

0
0
Numbers are as of March 2, 2022; there may be some lag between submission and the USPTO processing the various files.

* All three were basically the same, for variations of the same mark.

** One of the fifteen was withdrawn.

*** One was not instituted at all, without even generating a deficiencies notice. It was submitted by an unrepresented petitioner. Frankly, I’m not sure it was substantially different from others that did get a chance to amend via the deficiency process. The petitioner got a bit of a raw deal.

**** Our one example was a response filed by an unrepresented applicant; the response does not attach an example of use

If you need to file a re-examination or expungement request, the relevant forms are available here. It looks like registrants will use a standard Post-Registration Office Action Response form, but we’ll see if those end up being the same file type or not — none have been filed yet.

Finally, if you need to do research about how others are filing or responding to re-examination or expungement requests, you can do that on TM TKO. In an Office Action search, you can select Document Types that are relevant to Re-Examination or Expungement proceedings: Petition for Expungement/ReExam form, Response to Petition Inquiry-Expunge/ReExam, and 30-day Inquiry Letter to Petitioner. The Registrant’s Office Action responses will also be searchable, whether as a unique file type or batched with normal Post-Registration Office Action Responses remains to be determined.

Updated Interface Features and Bulk Search


TM TKO has made a number of updates and improvements to to our user interface over recents weeks, and we thought a summary blog post was warranted to summarize all the changes!

Tracking improvements

Across all searches, we’ve added a “Docket Number” field. You can also find this in your History window, making it easy to keep track of — and get back to — prior projects.

Search tagging and commenting

In all searches, we have made a number of improvements to make it easier to tag and comment on results. The first column of your results now has more going on than it used to. The first row has a number and a pair of arrows; these let you move around in the report and control its functions. The second row has expanded tagging functionality and a new notes feature.

The number in the upper-left is now an active link. Click on it, and we’ll bounce you up to the scatterplot to see where this application or registration record is located.

The paired arrows in the upper right will compress the contents of that row to a single line, or expand it again. It’s useful for shortening up lengthy descriptions of goods and services.

The tagging star is not new, but some of its functionality is. When you click on the star, it won’t immediately turn blue like it used to. Instead, you’ll get a popup with several color options: red, yellow, green, blue, and clear. This will let you prioritize and re-sort results how you want them, both inside the platform and in exports. (More on the export side shortly.) All of your old searches with blue stars will still appear blue, but you can edit those to use the new colors.

After you pick a star, you can double-click to apply that same star color to any other rows. Pick a new color from the color selector, and double-clicking will apply that new color.

The little pencil-writing-on-paper icon in the lower right allows you to add and edit notes on a per-record basis. Click on one, and you’ll get an interstitial pop-up to add your comments: comments about the risk analysis, a link to the mark in use, or etc. In the platform, you can read the comment by clicking on the icon — you’ll see a darker icon for any rows that have user comments.

Where the comments show up in exports varies a bit. For Word and PDF exports, they show up in a row immediately below the commented-upon record. Some comments can be pretty long, and this makes sure your insights won’t be squashed into a tiny little column. For CSV exports, they’ll be the furthest-right column, but on the same row.

Search report spacing and review

The small “paired arrows” in the bottom right show up in several places in the interface. They do the same thing: give you a “compressed” view of results. If you click on it on a single line, it’ll shorten that up to just the core details. You might use it to, say, skim over a 44(e) registration with a list of goods that goes on and on and on and on. Here’s what a shortened row looks like:

If you click the two-arrow icon on the top of a search or a section of a search, it’ll single-line all records. It’s just like the per-row expander, but applied to the whole section of the report. If you click the four-arrow expander icon, for either the whole report or just a section, the rows will expand to the full width of your window with no whitespace buffer.

Search export

The export buttons have moved from specific sections to a unified export button at the top right of the page, as shown below.

When you click on an export type, you’ll get a much more detailed set of options than before. You now have more optionality about both what results to include by section (all, only tagged, or none) and about the order they will appear (sorting by relevance or tags). If you sort by tags, you’ll get results in order, with red first then yellow, green, blue, and clear (untagged). This should allow you to get your charts ordered exactly how you want them with less effort.

At the bottom, you’ll see some extra checkboxes — you can choose whether to include static images of the scatterplot and bar graphs (previously available in PDF and now available in Word, too), and whether to include item-specific notes.

Bulk Search

Users with heavy clearance needs have requested a way to enter bulk searches. For example, clothing brands may need to clear hundreds of names for a new seasons’ catalog, or pharma brands may need to get a long list of candidate names to submit for regulatory approval. We have just added a feature to facilitate these clearances.

The new Bulk Order page under Knockout is where you can take advantage of this new convenience. It’s simple to order multiple searches for different marks using the same goods, whether word marks or designs, and you can even input names via spreadsheet. Bulk searches are no less thorough than a normal search, and you can go into each search report individually. To facilitate quick review, bulk orders also have a convenient preview page that summarizes all the results. It provides you a quick risk assessment (using the red/yellow/green stars; these are user-editable so you can customize the assessment) and a short preview of the top handful of results. It’s a huge time saver! To reflect the additional computational impact of turning around large numbers of results quickly, bulk orders have a $5 fee per marked searched.

Thanks!

Your feedback and suggestions are really important to TM TKO — they help inform how and when we make updates to our services. We hope that you will enjoy these upgrades, and keep the suggestions coming!

Trends in 2(c) refusals

For today’s blog post, we’ll take a look at 2(c) refusals. Section 2(c) of the Lanham Act provides that registration should be barred where a mark:

Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.

Looking at just US-based applicants, 2(c) refusals apply in about 2% of outgoing Office Actions. Still, given the large numbers of applications in 2021, that’s almost 4,000 2(c) refusals to date. Roughly 100 of those are for Presidentially-related marks, in a roughly even mix of Biden-Harris-related and Trump-related filings, and a smattering of Obama-related ones still percolating around from the especially stubborn. As a group, these have to be some of the lowest-quality applications that the USPTO has to slog through. Most of these arguably don’t function as marks anyway and/or would get refused on “failure to function” grounds or under 2(a) anyway, even if 2(c) was not a part of the statute.

That still leaves us with quite a number of 2(c) refusals. We reviewed all of them, and roughly 70% are “traditional” sorts of 2(c) refusals — the actual name of or a mark incorporating the actual name of a person (BROCK LESNAR or GLORIA SERVICES or GILLIE CHESTER’S NASHVILLE HOT!), or their name-like pseudonym or nickname (ZØ MARIE or STEWIE). A few are a bit further afield from being name-like, like PRINCE OF BLUE or ALKALINE VEGGIE MOMMIE. (Occasionally, the Examiners have to be careful about their phrasing to avoid theological discussions about whether 2(c) should apply to IAMGAWD, a DJ.) Refusals based on the picture element alone are pretty uncommon, but do happen occasionally, especially for more lifelike portraits where a face is more clearly identifiable, as in this application for LATINX POP LAB, where the Examiner did a Google search for the applicant, noted the likeness, and asked for a consent statement.

Drawing: 90153883

Plenty of marks generate 2(c) inquiries where the Examiner just can’t tell, like TALDE, or that sound name-like but the applicant says do not identify a specific living individual, like LINGLEE.

Class 41 entertainment-related content (live events, etc.) and associated goods like musical recordings, etc. are far more represented in 2(c) refusals than the general application pool. Over one quarter of 2(c) refusals are in Class 41.

If you ever need to research 2(c) refusals or effective responses, you can use TM TKO’s Office Action research to dive deep into the issue, and find effective responses on similar facts, or that have convinced your Examiner, or both!

Chinese filers and the US counsel rule

The USPTO’s recent show cause order to Chinese IP firm Shenzhen Huanyee Intellectual Property Co., Ltd., about its alleged unauthorized practice of law in the US in over 8,000 applications and widespread use of false information in those applications. The Office may invalidate all such applications.

The USPTO has issued these in other situations, like this 2018 order to USAEU Intellectual Property Agency Co. Ltd. (over 2,500 applications) and a prior round of 2016 enforcement. Prior rounds of enforcement did not invalidate the applications or resulting registrations, so the Office is definitely being more aggressive this time. A list of enforcement actions — lots of which are against Chinese representatives — is available here.

TM TKO did some research on some of the most common Chinese email providers (qq.com, 126.com, 163.com, sina.com, 139.com, sohu.com, and foxmail.com) and how frequently email addresses from those providers are used as the correspondent of record in USPTO trademark filings. It’s a lot! A surprisingly large number of these just flatly list a firm with a Chinese address as correspondent — at least 50%. This isn’t necessarily problematic — a US-licensed attorney could be practicing there — but I wouldn’t be shocked to find future unauthorized practice actions against some counsel of record in this data set.

2021: 23,500+

2020: 49,000+

2019: 22,300+

2018: 22,200+

2017: 22,900+

2016: 14,600+

The number of applicants listing a US address and using a typically-Chinese email address is pretty high. Again, it’s not impossible that this happens, but I’d be shocked if a decent percentage of these (a) don’t have a common “address” and (b) wouldn’t be of some interest to the PTO’s disciplinary czars.

2021: 540+

2020: 1800+

2019: 640+

We’ll be monitoring additional USPTO enforcement actions to see if this aggressive enforcement comes to pass (especially invalidating applications) turns into a continuing priority, or is more of a sporadic twitch of their enforcement muscles.

Letters of Protest – Interesting Initial Findings

We’re now starting to index Letter of Protest decisions — the “Letter of Protest Memorandum” responses. These are classified as “Administrative Response (ADR)” as a “Document Type,” under “Office Action Criteria” in manual Search. Occasionally, a Letter of Protest itself makes it into the file for some reason — these are flagged as “Letter of Protest” or “LOP.”

This blog post takes an initial look at some of the more interesting trends that we noticed from some initial research.

A. The Vast Majority are 2(d)-related.

Unsurprisingly, most Letters of Protest decisions (and thus most Letters of Protest) are attempts to keep third-party applications for arguably similar marks. These accounted for 95%+ of the currently-flagged Protest-related content. Of those that had ADR or LOP flags, only about 12% made it through to registration, suggesting that Letters of Protest are extremely effective tools in proactively protecting clients’ trademarks.

B. The Red Cross is Super Active

The Red Cross seems to be filing a bunch of Letters of Protest relating to use of the cross or “plus” designs.

Sometimes, they just point out that the design element might be a “Swiss flag,” e.g. a black and white logo for healthcare cost tracking and insurance apps (abandoned) and a mark for IMMUNITYAID (with the white cross in the red “D”) for dietary supplements (registered; no refusal issued).

In others, they more expressly make a 2(a) claim based on the Red Cross mark. These are often but not always medical related, e.g. compare a G+ mark for surgical equipment (published for opposition) and POWER PLUS for motor oil (still pending, 2(d) refusal unrelated to the Red Cross). Sometimes these do result in 2(d) refusals, like a dove+red cross design for healthcare services (abandoned), or 2(a) refusals, like THRIVE HYDRATION & design (cross in the “t”) for vitamin injection services.

C. Specimen Protests Haven’t Been Especially Common

While most Letters of Protest related to 2(d) refusals, there were a few specimen ones! A number resulted in digitally-altered image refusals, and applications so refused usually went abandoned. Not always, though; some applicants just swapped in a substitute specimen and made it through to registration.

We’ll pay attention to these as the data pool expands. In the meantime, enjoy the new research opportunities!

Assessing a 2(d) Refusal – UNQUESTIONABLY GOOD for hard seltzer

We like to take a look at interesting 2(d) refusals. They present interesting fact patterns, and they can help us show you how to make the best use of some of TM TKO’s tools.

Today’s Refusal

Today, we are looking at an application filed by Anheuser-Busch for the mark UNQUESTIONABLY GOOD for hard seltzer. It ran into a 2(d) refusal based on a registration for the mark UNQUESTIONABLY ORIGINAL, disclaiming “original,” for beer and beer garden services, owned by District 9 Brewing Company.

The Prosecution History thus far

A-B got an initial refusal in September, filed one round of arguments in March, and got a final refusal on April 7, 2021.

Differences Between the Marks?

A-B argued at length that UNQUESTIONABLY is laudatory, and supports the second words in each mark — and that GOOD and ORIGINAL are quite different. Even though our knockout algorithms emphasize UNQUESTIONABLY quite a lot as a part of the mark, and score UNQUESTIONABLY ORIGINAL as one of the top couple of results, I’m actually very sympathetic to this argument. Because of the differences between the marks, I agree with A-B the consumers wouldn’t confuse the two marks.

The UNQUESTIONABLY ORIGINAL mark is a slogan used by the registrant — a secondary mark paired with its D9 Brewing house mark.

A-B’s real-world use of the mark is also secondary, although not as clear-cut. A-B is using the mark in plain text on their website, e.g. “…, and is filtered five times for an unquestionably good taste.” That’s not even a trademark use, but might cause problems under 2(e)(1) or “failure to function” grounds during specimen examination. The company is also using it with a video series called a “Flavor Journal,” where the “Thirsty Bartenders” vloggers and a guest come up with “Unquestionably Good” food/beverage pairings using Bud Light Seltzer. That’s probably not going to cut it as a specimen of use with the USPTO either.

Nevertheless, it seems to support the idea that neither mark is “primary” on the minds of customers — those are the BUD LIGHT and D9 BREWING marks, or possibly a secondary, beer-specific mark on the D9 side. Alas, the USPTO doesn’t consider this — perhaps examination outcomes would be more consistent and more closely matched with reality if the Office could consider the real-world centrality (or lack thereof) of a mark in its commercial context in the context of considering 2(d) refusals. It makes sense why it doesn’t — a registrant could claim secondary use in prosecution and later expand it — but it still seems like something can be done to improve results.

We took a quick look, via ThorCheck’s Term Coexistence search, at otherwise similar marks that differ in this way — one has ORIGINAL, the other GOOD. There were slim pickings in the beverage classes — SINFULLY GOOD SPIRITS! vs. ORIGINAL SIN was the best we found. Term coexistence examples like this are always a bit chance-based, since two companies have to happen to pick names that differ in exactly this way.

Differences Between the Goods?

A-B is pushing uphill here — the Examining Attorney emphasized evidence that various products use the same mark for both beer and hard seltzer, including A-B’s own Bud Light brand, Michelob Ultra, Corona, and more. Perhaps because of this, A-B did not contest the relationships of the goods in the first Office Action Response. Perhaps, also, A-B did not wish to go on record arguing that two products are not closely related — it wouldn’t want to have that quoted back to it during a later enforcement effort.

We used ThorCheck to do a comparison between “beer” and “hard seltzer.” While there are certainly examples of the same companies providing both under the same or similar marks (more on that shortly), there are also a lot of examples of similar marks co-existing.

OwnerGoodsMarkMarkGoodsOwner
Summit Brewing Company032 beerSUMMIT BREWING COMPANY
Disclaims: “BREWING COMPANY”
Reg: 3061467
Serial: 76383607
Registered And Renewed
Reg: 02/28/2006
Filed: 03/13/2002
SUMMIT SELTZER
Disclaims: “SELTZER”
Reg: 6206853
Serial: 88576621
Registered
Reg: 11/24/2020
Filed: 08/13/2019
033 hard seltzerSummit Seltzer Company LLC
DC BRAU BREWING LLC032 beerTHE CITIZEN
Reg: 4169260
Serial: 85374727
Section 8 & 15 – Accepted And Acknowledged
Reg: 07/03/2012
Filed: 07/19/2011
CITIZEN SELTZER
Disclaims: “SELTZER”
Reg: 6171247
Serial: 88730364
Registered
Reg: 10/06/2020
Filed: 12/17/2019
033 hard seltzerCitizen Cider, LLC
Mad Scientists Brewing Partners LLC032 beerEXPRESS
Reg: 3990176
Serial: 85209319
Section 8 & 15 – Accepted And Acknowledged
Reg: 07/05/2011
Filed: 01/03/2011
TROPICAL EXPRESS
Disclaims: “TROPICAL”
Reg: 6310176
Serial: 88753462
Registered
Reg: 03/30/2021
Filed: 01/09/2020
033 hard seltzerDraught Works, LLC
Vino.com, LLC032 aleNECTAR ALES
Disclaims: “ALES”
Reg: 4295409
Serial: 85664805
Section 8 & 15 – Accepted And Acknowledged
Reg: 02/26/2013
Filed: 06/28/2012
NECTAR
Reg: 6218762
Serial: 88785906
Supplemental Reg.
Registered
Reg: 12/08/2020
Filed: 02/05/2020
033 hard seltzerDivinely Nectar, Inc.
Belliveau, Justin R.032 beerGRID CITY BEER WORKS
Disclaims: “BEER WORKS”
Reg: 6257431
Serial: 87300104
Registered
Reg: 01/26/2021
Filed: 01/13/2017
GRID CITY BUBBLE WORKS
Disclaims: “WORKS”
Reg: 6171375
Serial: 88785058
Registered
Reg: 10/06/2020
Filed: 02/04/2020
033 hard seltzerGrid City Beer Works
Caldera Brewing Company032 aleASHLAND AMBER
Disclaims: “AMBER”
Reg: 3844351
Serial: 77897387
2(f) claim
Registered And Renewed
Reg: 09/07/2010
Filed: 12/18/2009
ASHLAND HARD SELTZER
Disclaims: “HARD SELTZER”
Reg: 6263853
Serial: 88642477
Registered
Reg: 02/09/2021
Filed: 10/04/2019
033 hard seltzerAshland Beverages, LLC
East Nashville Beer Works, LLC032 beerEAST NASHVILLE BEER WORKS
Disclaims: “BEER WORKS”
Reg: 5070316
Serial: 86764667
Supplemental Reg.
Registered
Reg: 10/25/2016
Filed: 09/22/2015
NASHVILLE SELTZER
Disclaims: “SELTZER”
Reg: 5958107
Serial: 88573835
Supplemental Reg.
Registered
Reg: 01/07/2020
Filed: 08/09/2019
033 hard seltzerTaylor, Kent C.
Sideways Brewing Company, LLC032 beerSIDEWAYS FARM & BREWERY
Disclaims: “FARM & BREWERY”
Reg: 5885805
Serial: 87385887
Registered
Reg: 10/15/2019
Filed: 03/26/2017
#GET SIDEWAYS
Reg: 6135704
Serial: 88787476
Registered
Reg: 08/25/2020
Filed: 02/06/2020
033 hard seltzerIslamorada Distilling LLC
The Denver Beer Company, LLC032 beerMAUI EXPRESS
Reg: 5260511
Serial: 87290760
Registered
Reg: 08/08/2017
Filed: 01/05/2017
MAUI HARD SELTZER
Disclaims: “HARD SELTZER”
Reg: 6044346
Serial: 88681927
Supplemental Reg.
Registered
Reg: 04/28/2020
Filed: 11/06/2019
033 hard seltzerKahu ‘Ohani Inc.

We also took a quick look at overlap — where the same company used the same mark for both beer and hard seltzer, just to assess the strength of the argument. Large brewers make up a lot of the results – A-B has several marks (BUD LIGHT, NATURAL LIGHT, ALOHA BEACHES), ; several smaller brewers also have registrations for both, like Great Divide (WHITEWATER), Craft Brew Alliance (OMISSION), Spruce Street (TWO ROBBERS), Detroit Rivertown (ATWATER), Montauk Bewing (MOUNTAUK). Interestingly, Kahu ‘Ohnana, mentioned above, owns registrations for MAUI BREWING CO. and MAUI HARD SELTZER that co-exist with the MAUI EXPRESS registration noted above.

We also took a look at prosecution histories to attempt to find filings for “hard seltzer” that overcame prior registrations for “beer.” Here is the search to do so, for TM TKO users. This yields a few good examples, including the aforementioned ASHLAND HARD SELTZER vs. ASHLAND AMBER (arguments, including statistically-driven arguments that most beer makers do not make hard seltzer and vice versa*). Also, the search finds some really interesting non-refusals: an A-B registration for SOCIAL CLUB did not receive a citation to some prior registrations for SOCIAL for goods including beer, notwithstanding a Letter of Protest seeking as much. SPYK’D (for hard seltzer) “ran into” a similar non-issued Office Action vs. SPIKE (for beer and booze) — a Letter of Protest was accepted but didn’t generate refusal.

* ThorCheck helps with this type of argument — its charts show that there are over 18,000 active, use-based registrations for beer vs. under 200 for hard seltzer, and only ~10 show overlap in production. Unsurprisingly, the Ashland arguments focused on the percentage of beer producers vs. the percentage of cider producers!

Springtime: Flowers, Trees, and Trademarks

It’s a beautiful spring so far, and we’re all enjoying the pretty blossoms and the pollen-driven sneezes that go along with getting outdoors. To honor the return of all the grasses, trees, and other plants in our lives, we’re taking a closer look at how trademarks interact with these products.

Trademarks for Plants

Can you get a trademark for a brand that you will use with plants? Of course! Recent registrations for apple trees include marks like SERUI, CRIMSON SNOW, APIFRUIT, COSMIC CRISP, SUBLIME ORGANICS, BUD 10, KIKU, RED ROMANCE, and many more.

Varietal and Cultivar Names

There is a big exception — the “varietal” or “cultivar” names of a cultivated variety of subspecies of a plant or seed. The Office considers these to be the equivalent of the “generic” name for the plant or seed, regardless of whether the name is a fanciful name or a code. TMEP § 1202.12. The varietal or cultivar name is used in a plant patent as the identifier for the variety of plant or seed, and remains so regardless of whether the patent expires. In re Pennington Seed Co., 466 F.3d 1053, 80 USPQ2d 1758, 1762 (Fed. Cir. 2006).

Examination of Varietal and Cultivar Names

The Office starts by checking the registry of names under the Plant Variety Protection Act. The TMEP lists http://www.ars-grin.gov/npgs/searchgrin.html as the URL, but the Germplasm Resources Information Network (“GRIN”) database has apparently been updated to https://www.ars-grin.gov/PVP/Search. Dictionary evidence and more can also be relevant, as is WIPO’s fantastic PLUTO Plant Variety Database https://www3.wipo.int/pluto/user/en/index.jsp.

Some of these plant varietals are simply alphanumeric codes; it’s unusual for a company to ever attempt to protect these as a trademark. For example:

PVP Application Summary: 200000290

Application StatusCertificate Issued
Status Date5/2/2002
ApplicantMonsanto Technology, LLC
Cultivar (Variety) Name22DHQ3
Experimental NameNA
Common NameCORN
Scientific NameZea mays L.
Certified Seed?No
GRIN-Global AvailabilityNot Available
Full Certificate PDF

More arbitrary names are another matter altogether. Companies often pick a name for the new product without taking trademark concerns into account, and attempt to protect the cultivar name as a trademark. This never goes well.

The Office views these as incapable of functioning as a trademark – the equivalent of an insurmountable genericness refusal. No amount of advertising expenditure can salvage it as a mark. See, e.g., In re Farmer Seed & Nursery Co., 137 USPQ 231, 231-32 (TTAB 1963). It doesn’t even matter if the varietal name was never actually used — it’s sufficient that it was registered as a varietal name. In re American Onion Int’l, Inc., Ser. No. 76660662, p. 5 (TTAB Aug. 8, 2008), available at https://ttabvue.uspto.gov/ttabvue/v?pno=76660662&pty=EXA&eno=13. However, if a term is a variety name for one type of plant (like a dianthus) it won’t bar registration of that term for a different plant (like an apple tree), at least if the applicant makes that clear in their description of goods. See, e.g., the registration for RED ROMANCE, Reg. No. 5493245.

The University of Minnesota, which developed the varietal, attempted to register HONEYCRISP for “apple trees, namely variety Minnesota 1711 R.” Ser. No. 74156209. The Office’s online records are spotty in the early 1990s, and the full file history is not online, but it went abandoned due to a failure to respond to an Office Action — we can confidently assume that it foundered on the plant varietal refusal. In other applications, the Office also found the term descriptive or generic as applied to related goods, like cider.

Plant varietal refusals don’t often make it to the TTAB. But, a prominent recent example saw Rainier Fruit Company’s attempt to register a lightly stylized version of HONEYCRISP for apples. Rainier didn’t even try to argue the cultivar issue — it disclaimed HONEYCRISP — but the stylization was not sufficiently distinctive.

In re Rainier Fruit Co., Ser. No. 86108344 (TTAB Sep. 29, 2015), available at https://ttabvue.uspto.gov/ttabvue/v?pno=86108344&pty=EXA&eno=10.

What’s getting through? Marks that pair HONEYCRISP with an additional, (more) distinctive elements. The two currently active registrations are a Supplemental Registration for PREMIER HONEYCRISP, with HONEYCRISP disclaimed, for “live honeycrisp apple trees,” and a Principal Register registration for ROYAL RED HONEYCRISP for “live apple trees.”

Takeaways for Trademark Lawyers

Please make sure your clients plan for trademark protection before filing for a plant varietal production certificate and plant patents. If trademark and patent counsel are not on the same page, using the cultivar name in the PVP certificate will be fatal to attempts to claim trademark rights in that term.

Results of the TM TKO 2021 Trademark Practice Economic Survey

For the past two weeks, TM TKO ran a survey about how trademark professionals are feeling about their practice in 2021. We’ll summarize the results in this blog post. Thanks to our users and to participants on Oppendhal Patent Law Firm’s e-trademarks listserv for their responses!

About TM TKO

A very quick word about us – TM TKO has been providing daily or subscription-based access to a variety of trademark research tools since 2015. Our customers include AmLaw 100 firms, trademark boutiques, solo practitioners, government agencies, in-house counsel, and more. We had our best year ever as a company in 2020, even if the year posed its challenges to us all as humans, and are looking forward to 2021. Our data covers the US, CA, MX, AU, NZ, EU, FR, DE, ES, the UK, and WIPO.

We aim to help trademark lawyers with three main pillars of all successful trademark practices: solving everyday problems, solving hard problems, and growing practices.

Everyday problems: our clearance, search, and watch tools help you with your day-to-day practice needs. Hard problems: specialized research tools like trademark Examiner analytics, automated and manual Office Action research, and comparative research via ThorCheck® can help overcome difficult prosecution refusals. Growing your practice: we have an expanding set of marketing solutions to help grow your client base and generate more projects for existing clients.

Haven’t used TM TKO yet? It’s free to try for 30 days.

To the Results!

Trademark Practice – Size and Geography

Our respondents were almost evenly split between solo and 2-5 lawyer IP practices, with about 20% in larger groups.

About 40% of respondents were from the east coast, 15% from the south, and the rest almost evenly split between the west and southwest. All but a couple of respondents were American lawyers. Of those, about 50% were in large cities, with the rest evenly divided between small and medium size cities.

Expectations for 2021

Two-thirds of attorneys are looking forward to 2021 being better than 2020, with most of the rest expecting a similar year. Unsurprisingly, given what a mess 2020 was in the real world, not too many expect the rest of 2021 to be worse than 2020!

Most respondents were neutral or optimistic about their personal practices, and most saw the greatest growth in small and midsize clients versus large companies. Large company work was the fastest-shrinking, among respondents.

Litigation and international prosecution slowed down the most; domestic prosecution and non-litigated dispute work were the most consistent growth areas. Transactional work and international prosecution work had about the same numbers of respondents who saw growth incoming and shrinkage, so there was no clear trend of those practice areas.

About two-thirds of respondents are seeing most of their new work come from existing clients, with referrals from in-country clients, business development efforts, and referrals from foreign counsel each attracting about half-as-many respondents as the new-work-source before it.

Remote work and professional growth in a post-Covid world.

About 40% think that the future will see more remote work than in the past, and another 20% expect continued remote work. Others didn’t move to a remote model anyway, it would be a temporary issue, or aren’t sure how this will play out. Of those expecting more remote work, around 30% was because employees prefer it, about 10% because management does, and about 14% see cost savings on office space as a benefit.

Almost two-thirds or respondents attend INTA in normal years, with other conferences or state bar meetings each racking up over 20% of respondents. Only about 40% plan to attend INTA this year, a pretty good drop; “other” events saw some growth (online CLEs?), and state bar meeting attendance rates seem likely to stay pretty constant. Perhaps it makes some sense that people are currently leery about attending highly international conferences in a world where vaccine distribution is far from equal; this may change as the year moves along and (hopefully) that situation changes.

Practice challenges in 2021

Perennial favorites like staffing issues, client acquisition, the cost structure of a process (and commoditization of it, on the flip side), and price pressures all received at least 20% of responses. Client retention and technology were, comparatively, minor worries.

Technology

Search, watch, and docketing were pretty ubiquitous, with IP investigative services at around 40% of respondents. Anti-piracy/counterfeiting services (2%) and trademark renewal services (2%) were far less frequently used by our respondents. Most practitioners kept their technology services pretty constant in 2020, and plan to do so in 2021 too.

Practice and the USPTO

About half of respondents replied that the USPTO hasn’t improved anything in the last several years, with occasional plaudits for website usability, 2(d) prosecution decisions, and TTAB decisions. Almost half of respondents think that 2(d) refusal decisions have gotten worse, and about a third found degradation in 2(e) refusals and other prosecution decisions. The TTAB was the least-listed, although whether that reflects on the merits of the Board’s decisions or just the fact that most practitioners don’t directly interact with the Board on a regular basis is beyond the scope of the survey.

Other comments

Our free-text comments focused on several common threads:

– unhappiness with the USPTO, both with its technology and the rate and thought processes behind 2(d) refusals
– dissatisfaction with the number of registrations that get through with iffy-to-fake specimens, and the greater amount of pushback that practitioners feel they are getting for specimens that have historically been acceptable.