Trademark filings can be an interesting lens to look at an entire industry. Today, we’ll look at real estate. It had a huge rise in the 2000s as housing prices boomed, then the subprime mortgage crisis hit the industry hard from 2007 – 2010.
Trademark filing trends track the rise, fall, and slow return of the industry surprisingly well. I looked at 4 main classes – Class 9 (apps), 35 (), 36 (), and 42 (hosted software). Filing trends for each largely match up, although Class 36 is both the most common class for applications and has seen the most proportionate growth in the post-2013 rebound.
The filing uptick before 2007 is clear, and followed by the sharp, recession-induced tail that we would expect. Filings were static though 2013, and started to rebound. Class 9 and 42 (apps and websites) are the least common, which may make sense given the additional technological investment required. Class 35 (real estate sales and marketing services) were more common, and Class 36 (listing and brokerage services) by far the most.
It’s not quite clear why Class 36 applications have spiked more than other classes over the last three years. I suspected that it might be a rise in foreign applicants, especially from China, but that is not a meaningful factor.
It is interesting that trademark filings have jumped more than actual US home sales – sales dropped from more than 7 million in 2005 to a low of 4.1 million in 2008 and 2010; sales have only rebounded to around 5.5 million per year in 2017-2018.
With HBO’s hit adaptation of George R.R. Martin’s A Song
of Fire and Ice drawing to a close, Game of Thrones has
a trademark portfolio and enforcement budget to match its cultural status.
We’ll just look at HBO’s US portfolio, headed by in-house
counsel Judy McCool.
At the time of writing, HBO has just over four hundred and fifty active
applications and registrations in its entire portfolio, and more than seventy
relate to Game of Thrones – about 15%
of HBO’s entire US portfolio.
The title Game of Thrones
or variations account for just over half of the total filings, and cover
everything from DVDs to spinoff games to slot machines, clothing, action
figures, watches, food and booze, and even swords. The rest of the filings are
scattered between character-specific marks like KHALEESHI for makeup and HODOR
for clothing to plot-driven marks like THE LONG NIGHT and WINTER is coming.
There are also a handful of more random filings like HAND OF THE QUEEN for
alcoholic beverages and clearly the strangest, MILK OF THE POPPY for clothing
and mugs (!).
Enforcement Efforts at the TTAB
HBO’s Trademark Trial and Appeal Board enforcement team, led by Tamara Carmichael
of Olshan, also has its hands
full. It has taken extensions of time to oppose or opposed dozens of
applications by third parties, most related to the Game of Thrones title itself.
7 ongoing extensions
15 withdrawn applications
10 defaults after opposition (most were unrepresented foreign applicants)
1 registration cancelled
2 amended applications
2 did not oppose
Three of HBO’s applications were also opposed or subject to
extensions; filings for GAME OF THRONES went through to registration, while HBO
dropped applications for DROGON and THREE EYED RAVEN for alcoholic beverages.
You represent a client with a successful new Spanish-style restaurant chain, called “Saffron.” You helped file a trademark application for the mark for restaurant services, and the Examining Attorney issued a 2(e)(1) refusal, noting that saffron is an ingredient in some of the dishes served at the restaurant and concluding that it is thus merely descriptive of the restaurant services. How do you push back?
One great way is to look at the responses of other applicants who dealt with very similar objections, and successfully overcame them. Go to “Search” and then the “Office Action” tab. We’re looking for active registrations in Class 43 on the Principal Register that faced a 2(e)(1) refusal where the Examiner focused on the “ingredient” issue. Your search will look something like the strategy below:
The search yields over 600 relevant documents; on the first page of results alone, we have registrations like RED CHERRY, YUZU SUSHI, LA TAGLIATELLA, PICKLED LEMON, RED MANGO, MARGARITA COMPANY, and more; the second page yields more great examples like AOILI (stylized), BLACK GARLIC, FILINI, BONE & BROTH, and more.
We searched for outgoing Office Actions to hone in on the Examiner’s concerns, but finding relevant responses is simply. Click “Documents” to get a full list of TSDR history, and just click into the next Office Action Response to see how the applicant addressed the issue.
If you find a good example you like, click the magnifying glass and select the “Text” option – you can copy and paste plain text from this document to get your own arguments started.
The next time you face an Office Action with a unique fact pattern, make sure to use TM TKO to kick start your research to find and build on proven successful responses!
TM TKO has now incorporated visual indicators of citations in knockout search and manual search results. There is a gray circle for any citations “inbound” during prosecution, and there is a red circle for any “outbound” citations against other applications. You can click on either circle to see full details on the cited marks, to hop into their file histories, and more. This data is also available via the magnifying glass.
Visibility into cited records adds considerable depth to the search report. Knowing how frequently the USPTO is citing this application as a bar to other applications helps you more accurately judge the risk that filing might pose to your client’s mark, and secure better outcomes for your client with less research time.
TM TKO has added a bit of additional visibility into filing details in the Office Action Analysis tools’ list of Similar Acceptances (acceptances for similar marks facing the same issue) and Examiner Acceptances (recent acceptances from your Examiner for filings facing the same issue). Now, when you mouse over a class, you’ll see additional details on the goods or services for that application. Keep on the lookout for more updates!
This blog posts looks at TM TKO’s new Office Action Analysis tool in more detail, demonstrating how it can help you build a find key prosecution data and build a strong response more quickly than ever before.
We’ll look at a recent final Office Action issued on March 22, 2019 for the mark KARMA ICE CREAM, Ser. No. 88/249,249. The application, filed by two individuals, covers a variety of frozen confections in Class 30. It raised two issues – 2(d) citations or potential citations to four prior filings, and requested a disclaimer of “ice cream.”
TM TKO Automates Research on the 2(d) Issue
registrations or applications were cited as bars: KARMA, registered in Class 30
and 42 (Reg. No. 5431756), GOOD KARMA
(published in Class 30, Ser. No. 86651506) and SWEET KARMA (published in Classes 30
and 5, Ser. No. 87890908), and KARMA KOOKIES (pending in Classes 30
and 16, Ser. No. 88188680).
These citations are
all listed in the “Citations” section of the report, just after the main
application details. Each has a small triangle that can be expanded to show the
full web of prosecution citations.
KARMA registration –
cited against 4 applications, 1 published (SWEET KARMA) and 2 pending
(including KARMA KOOKIES)
GOOD KARMA published
app – overcame citations to two GOOD KARMAL registrations in prosecution; cited
versus published SWEET KARMA and pending KARMA KOOKIES application plus an
abandoned GOOD 420 KARMA application in Class 1.
SWEET KARMA – about
to be registered, no citations in prosecution and only cited against KARMA
KOOKIES and this application.
KARMA KOOKIES – the KARMA registration plus a whole slew of applications with KARMA; no response has been filed yet.
The Examining Attorney statistics suggest that the Examining Attorney of this application upholds initial refusals at a rate roughly consistent with the rate of the Office overall. (If the applicant was represented, you’d see attorney success rates too.)
The “Similar Acceptances” section points to helpful Office Actions overcoming comparable refusals, like two registrations for KARMA in Class 29 for differing goods with different owners, for GOOD KARMA CRUNCH in Class 30, for FRUITE KARMA in Class 29, for GOOD KARMA CAFÉ in Class 43, for KARMA KOLSCH and KARMA KOMBUCHA in Class 32 with different owners, and more. The applicants overcame 2(d) refusals based on the term KARMA with a variety of arguments and consent strategies, helping you quickly build persuasive responses on similar facts.
Just click on the magnifying glass, then “Documents,” and either click on the Office Action or response you want to see in PDF format, or click the magnifying glass again to get to a plain-text version.
Below this, the “Examiner Acceptances” section will point you to recent acceptances after 2(d) refusals for this Examining Attorney, which can provide additional insight into the types of arguments that the Examining Attorney may find especially helpful.
ICE CREAM Disclaimer Request
There isn’t a
service out there that can help you from having to enter a disclaimer of “ice
cream” where “ice cream” is generic for the goods, but TM TKO does help as best
it can. The “Disclaimer” section is organized by term.
Clicking on KREME
shows you three examples of applicants getting marks that contain KREME or
close variants through on the Principal Register without a disclaimer after
facing a disclaimer request, all in related classes.
This lets you rapidly view the best-case outcomes, and decide whether to pursue similar arguments. You can click on the magnifying glass and dig into the file histories of each. The registrations for NORTH FOREST KREME and KETO/// KREME, for example, both disclaim exclusive rights in “cream,” suggesting that the Examiner’s approach here is likely to hold up.
As above, clicking in on the magnifying glass to find additional details and do deep dives in file histories to learn more.
We hope the automated research provided by TM TKO’s Office Action Analysis tool is a huge boon to your practice, helping you do better legal research and drafting faster than ever before. Start playing with the Office Action Analysis tool now, and you have any questions, don’t hesitate to contact us at firstname.lastname@example.org.
It’s simply to access Office Action Analytics for your portfolio via TM TKO’s Watch tools. Go to the “Watch” page, select “New Watch,” then select “Office Action” – or just click here.
Under “Trademark Criteria,” add some constraints to limit results to just Office Actions that you care about. You have a few options. If your email address is used in the correspondence field, that’s the simplest way to set it up.
Or, you can pair up your firm name (use “phrase” if you have a common term) and your last name. You can use a firm email extension or docketing email address plus your last name, too.
However you have yourself identified in the “Trademark Criteria,” make sure to go down to “Office Action Criteria. Select “Direction” and limit to “Outgoing” correspondence from the USPTO.
If you get an Office Action, you’ll get an email report with a link into the system. It’s just a click from there to access the file history or get to the full analytics report, as shown below.
The Office Action analytics report will give you Examiner data and selected successful responses, targeted to your facts, prevailing on similar arguments. TM TKO is the only place to find this kind of trademark research, and it’s so easy that you can’t help but do your best work.
We hope you enjoy the new tools. If you have any questions, don’t hesitate to email us at email@example.com.
If you are not a subscriber yet, you can try for free for 30 days at https://www.tmtko.com/signup. TM TKO is very cost-efficient: a 24 hour day pass is $75. Subscriptions start at $250 per month or $2500 per year for one seat, and include unlimited use of all search, research, and watch tools.