Author Archives: TM TKO

Sympathy for the Regulator

The Difficulties Facing the US Patent & Trademark Office in Examining Specimens

The trademark community has been mildly frustrated with the Trademark Office in 2020 and into 2021 for two related reasons:

  • the feeling that a lot of crap has gotten onto the trademark registry, largely weird marks originating from China. Many of these are alleged to have dubious specimens or other issues with use claims, e.g. claiming use on a broad swathe of goods.
  • the feeling that otherwise perfectly valid specimens are getting caught up needlessly by new examination standards, increasing prosecution times and costs.

Let’s look at this from the Trademark Office’s perspective, and take a look at some examples of the sorts of applications that tend to generate practitioner discontent.

I. Spot-Checking New Applications For Specimen Issues

I focused on 1-word, use-based US filings without design elements filed by Chinese applicants in December 2020. I further restricted to just those that have the text “no meaning” to avoid translation/transliterations. The types of marks this generates – TERIQO, BEIYEIDEI, FABSMURD, MIZILI, URCHESE, FEOICH, and GOMNOA, are the sort of marks that tend to generate a skeptical eyebrow raise from practitioners. It’s a little ironic that these marks that generate practitioner skepticism are the most inherently distinctive marks on the protectability spectrum, since they’re gibberish in the first place.

Let’s take a look at these seven examples.

  • TERIQO for scissors, tweezers, etc. (specimen)
    • I’m not sure; it’s a screenshot and invoice from SellersGlobal. The photo of the hand actually holding the tweezers is the easiest to see, and looks legit. The shipping address on the invoice is partially redacted, but seems to be missing an actual street address anyway.
  • BEIYEIDEI for toys (specimen)
    • The photo looks pretty gritty/real.
  • FABSMURD for toys and pet toys (specimen)
    • Looks real; used on a tag. Multiple angles help and demonstrate “reality” well.
  • MIZILI for paper products (specimen)
    • Used on a point-of-sale eBay website. Probably “real,” although the page doesn’t show if the mark is also used on the physical product.
  • URSCHSE for various sorts of bags (specimen)
    • From an online receipt shipping to the US. Receipts are a bit weird, since it should be the customer getting the receipt not the intermediary vendor (CoolMall), but it does at least seem to show shipping to the US.
  • FEOICH for cosmetics (specimen)
    • Same as above – CoolMall receipts.
  • GOMNOA for candles and gasoline (specimen)
    • Amazon sales pages for candles. Candles and fuel usually aren’t provided under the same mark, so the scope of the goods covered in the use claim seem more debatable than the specimen itself.

None of these seem to be clear problems taken on their own merits. But, what about in the aggregate?

II. The Broader Question — What Kind of Registry Do We Want?

There were 32,986 applications that met these narrow criteria in just December 2020. That’s a TON of applications. For comparison, in December 2015, there were 30,098 US applications filed in total. That’s 2,000 less than just this this subset of China-based 1(a), 1-word, not-a-translation, standard character marks applications!

Let’s assume that many of these sales/shipments are pretty low-volume, at least at the time of registration. What could be done to preserve a smaller registry that reflect the marks that US consumers are actually likely to encounter? One option might be to require a certain volume of commercial activity. This could avoid the issue of sellers obtaining registrations for de miminis sales through online platforms that aren’t very big in the US. This would obviously have some serious impacts, cutting off registration as an option for new ventures, or at least pushing more small businesses to “sit on” an ITU application while building up their commercial presence. It would also raise difficulties for non-commercial brands that don’t generate sales. Some of these could be addressed by evidence other than sales, like website visits from US IP addresses or the like (potentially game-able, but more work), or just by having different use standards for domestic and foreign applicants (though that may raise equal protection issues).

We certainly don’t have a perfect solution — we’d love to hear your thoughts as the Office continues to grapple with these examination complexities.

The Trademark Modernization Act of 2020 — some thoughts

We took advantage of the holiday week to sit down and do some not-directly-work reading: the Trademark Modernization Act of 2020. It’s incredibly dumb that it had to be a part of the broader coronavirus relief act to get passed, but oh well.

The big focus is on providing new tools to keep the trademark registry narrower and more reflective of the actual US marketplace. There are a whole bunch of goodies in the grab-bag legislation.

I. Expungement Proceedings

Cribbing from Canada’s trademark law, the Act adds an ex parte expungement proceeding. It kicks off with a petition claiming that the mark has never been used in commerce or in connection with some or all of the goods or services in the registration. The petitioner has to provide “the elements of a reasonable investigation” to support the non-use claim and a tbd fee. There is a separate “proceeding” for each good or service for which there is a prima facie case; presumably, those get consolidated into a single actual proceeding; the registrant provides evidence of use or excusable non-use evidence, and the director makes a decision. The Act does not change or further define excusable non-use, so it may end up being a big loophole.

Intriguingly, the Director may institute an ex parte expungement proceeding of the Office’s own accord. This could be a big deal, if the Office is aggressive in clearing away some of the dubious registrations that have been on the upswing recently.

A few small technical details: co-pending proceedings aren’t allowed — wait your turn! — and successfully defending on expungement proceeding prevents future expungement proceedings forever for the goods/services at issue. I get the need for certainty, but this feels like it could be easily gamed — a company could have a friendly party institute a proceeding three years after registration, easily show use for all goods/services, and be immune from those challenges forever. I suppose non-use cancellation actions always remain, so it’s a limited form of immunity — hopefully it doesn’t develop into an issue.

In all, this should be a great change. The Canadian expungement mechanism works well, and it should be a solid addition to the US practitioners’ toolbox. It should be a nice boon to your favorite IP investigator, too.

II. Re-Examination

The Act adds a Section 16(b), a new mechanism to petition for re-examination on the grounds that the mark was not in use as of the use claim. The petitioner must provide similar evidence as an expungement petitioner. Presumably, petitioners will use this process to take a whack at improper-looking 1(a) registrations prior to the three-year “challenge period” date, and just use expungement otherwise — except in exceptional circumstances, where the applicant didn’t have use at registration but started thereafter. Similar limitations on later ex parte proceedings apply; as with expungement, there is no estoppel as to future inter partes proceedings.

III. Third-Party Submission of Evidence

Section 223 of the Act allows third parties to submit additional types of evidence — basically, it broadens the types of evidence permitted under Letters of Protest to be more or less anything, at the Director’s discretion. I’m sure the Director is thrilled at the opportunity to sift through all the garbage that would have been inadmissible via Letter of Protest! But, if there are some meaningful filing fees that go along with it, this probably ends up being a change that doesn’t have too much impact.

IV. Cancellation Grounds

The Act adds a new ground for cancellation: if the mark “has never been used” for some or all of the goods/services. This should be an easier burden to carry than proving “abandonment,” which the TTAB has always been weirdly hesitant about. This should be a fantastic change.

V. Litigation Changes

Congress responded to some case law that made preliminary injunctions more difficult for plaintiffs to get. After a Supreme Court case changed the injunction landscape for patents, eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006), the Third, Ninth, and Eleventh Circuits also made trademark injunctions much more difficult to get, emphasizing the need for proof that irreparable harm is likely. Other courts got hopelessly muddled about what standard to apply and why. The Act has addressed this issue by essentially restoring the old, more plaintiff-friendly standard.

Section 226(a) changes/clarifies the standards for injunctions. Now, for permanent injunctions, irreparable harm no longer needs to be proven — a plaintiff that wins on the merits basically gets a permanent injunction automatically. For preliminary injunctions, the plaintiff needs only to show a likelihood of success on the merits, not that plus proof of irreparable harm.

This is good change. If a plaintiff has succeeded in proving (or being likely to prove) that confusion is likely, it’s dumb to have to then prove that it deserves an injunction, too. This should reduce litigation costs a bit and encourage quicker settlement after the PI decision basically decides the case in one party’s favor or the other.

VI. Flexible Deadlines

The Act provides that the Office can request an Office Action Response in as few as 60 days instead of the default 6 months, and provides for an extension process.

The impact of this depends on what the Office decides to do. Perhaps it will have shorter deadlines for Office Actions that raise only certain simple, defined issues, like ID amendments and specimen issues? If so, this could be a good change to reduce application pendency. The key is doing this is a way that is simple and communicates (via status code or document name) what the deadline will be. If all it does is create uncertainty in docketing deadlines, this could be an annoying change that negatively impacts practitioners.

We’re now past the important changes, but not through all the changes.

VII. Probably Pointless Paperwork

The Office needs to provide a report on these various “decluttering” initiatives for members of Congress to not-bother-reading in three years. Section 227. The Office will probably just add the various tracking data Congress is requiring to a dashboard, print it to a PDF when the report is due, and tack on a few additional recommendations that the Trademark Advisory Committee is nagging it about in the months prior to the report deadline.

VIII. Weird Amendments

Section 228 clarifies that the Director has authority “to reconsider, and modify or set aside, a decision of the Trademark Trial and Appeal Board.” Um, OK? It’s not clear why this needed to be clarified or what it changes, or what weird lobbying path resulted in this getting thrown into the Act. Stay tuned to

Using ThorCheck and Office Action Research to Respond to a 2(d) Refusal

This post will provide a few examples of how TM TKO’s tools can help address a real-world 2(d) refusal. For this example, we looked at an application for SURFSIDE SHRIMP for food and retail services. The application went abandoned in mid-September 2020, after getting 2(d) refusals citing several prior marks: a registration for SURFSIDE for restaurant services, a now-abandoned application for SURFSIDE 6 for restaurant services, and a registration for JSC SURFSIDE SEAFOOD (disclaiming SEAFOOD) for a variety of seafood products.

Service Differences

Let’s start with the SURFSIDE registration for restaurant services. One argument we’ll definitely want to make is the differences between food products and restaurant services. The case-law is mixed, with the Office holding that there is no per se rule that food and beverages are related to restaurants, but with the Office also accepting evidence of overlap of two sets of products and services focused on famous brands like DUNKIN DONUTS and THE CHEESECAKE FACTORY rather than on the norms for those industries.

A good place to start here is by finding some examples of identical or very similar marks co-existing, one for seafood products and the other for restaurant services. This is a textbook ThorCheck research project.

Go to the G/S Similarity variant of ThorCheck. Put in a few restaurant-related services as the First Party services and fish and seafood-related products in the Second Party goods. There are two sets of arguments you can glean from the ThorCheck report.

First, you can analyze the extent of overlap. There is some overlap here — 57 registrations that cover both sets of goods and services (the “intersection” section) and another 12 or so in multiple registration certificates (the “similarity” section). These are a very small percentage of the overall restaurant marks (34k+) and seafood marks (2.9k+).

Second, you can find counter-examples under the Dissimilarity column: marks with identical literal portions (26 Exact) and with some substantial, non-disclaimed terms in common (348). These examples help counter the Examiner’s assertions about overlap under the second DuPont factor, bringing that factor closer to neutral or even favorable.

You’d want to tag your favorite examples, export them to Word to integrate the summary chart into your Office Action Response draft, and hit the “TSDR” export button to get status and title copies to attach as an appendix to your response. (Ah, for the day the USPTO would take notice of its own records! Until then… the TSDR Export feature is here for you.) Representative examples follow — there are many, many more high-quality examples in the report.

OwnerGoods/ServicesMarkMarkGoods/ServicesOwner
NISHIKI DINER USA, INC.043 restaurant servicesULTRA
Disclaims: “MENYA”
Reg: 5382174
Serial: 87284854
Registered
Reg: 01/16/2018
Filed: 12/29/2016
ULTRA
Reg: 5073682
Serial: 86287564
Registered
Reg: 11/01/2016
Filed: 05/21/2014
029 seafood, namely, frozen seafood, not liveSea Farms, Inc.
WE JING INTERNATIONAL CO., LTD.043 restaurant and bar servicesMYFISH
Reg: 5556825
Serial: 87532123
Registered
Reg: 09/04/2018
Filed: 07/18/2017
MYFISH Reg: 5218513 Serial: 87227227 Registered Reg: 06/06/2017 Filed: 11/04/2016029 seafood, not liveBUMBLE BEE FOODS, LLC
COMPASS GROUP HOLDINGS PLC043 restaurant servicesCOMPASS Reg: 2941437
Serial: 76585606 Registered And Renewed
Reg: 04/19/2005
Filed: 04/08/2004
COMPASS
Reg: 1288058
Serial: 73435352
Registered And Renewed
Reg: 07/31/1984
Filed: 07/20/1983
029 seafood productsOcean Garden Products, Inc.
MAMBO MARKS, LLC043 restaurant servicesMAMBO
Reg: 3709148
Serial: 77187552
Registered And Renewed
Reg: 11/10/2009
Filed: 05/22/2007
MAMBO
Reg: 5813995
Serial: 87386280
Registered
Reg: 07/23/2019
Filed: 03/27/2017
029 frozen seafoodQuirch Foods Co.
J. CHANG, INC.043 restaurant and bar servicesMIYAKO
Reg: 3614622
Serial: 77397285
Registered
Reg: 05/05/2009
Filed: 02/14/2008
MIYAKO
Reg: 4611647
Serial: 76715351
Section 8 & 15 – Accepted And Acknowledged
Reg: 09/30/2014
Filed: 11/12/2013
029 frozen fishMutual Trading Co., Inc.
HEAVENLY VENTURES TRADING LLC043 restaurant and bar servicesCORKSCREW
Reg: 3780866
Serial: 77826132
Registered And Renewed
Reg: 04/27/2010
Filed: 09/14/2009
CORKSCREW
Reg: 5847124
Serial: 88240862
Registered
Reg: 08/27/2019
Filed: 12/24/2018
029 seafood, not liveOre-Cal Corporation
Seminole Tribe of Florida043 restaurant servicesFRESH HARVEST
Reg: 4272430
Serial: 85713366
Section 8 & 15 – Accepted And Acknowledged
Reg: 01/08/2013
Filed: 08/27/2012
FRESH HARVEST
Disclaims: “FRESH”
Reg: 2664205
Serial: 76170562
Registered And Renewed
Reg: 12/17/2002
Filed: 11/24/2000
029 seafoodTrans Family, Inc.
Long, Bart043 restaurant servicesBLUE CIRCLE
Reg: 4395107
Serial: 85757452
Section 8 – Accepted
Reg: 09/03/2013
Filed: 10/18/2012
BLUE CIRCLE
Reg: 3758778
Serial: 77606046
Registered And Renewed
Reg: 03/09/2010
Filed: 11/03/2008
029 fresh fish and seafood, not liveBlue Sea LLC
Lakefront Brewery, Inc.043 restaurant servicesLAKEFRONT
Reg: 5112090
Serial: 86777659
Registered
Reg: 01/03/2017
Filed: 10/05/2015
LAKEFRONT
Reg: 2506327
Serial: 76152074
Registered And Renewed
Reg: 11/13/2001
Filed: 10/19/2000
029 processed seafoodLouisiana Premium Seafoods, Inc.
Starfish Laguna Beach LLC043 restaurant and bar servicesSTARFISH
Reg: 5974695
Serial: 86826352
Registered
Reg: 02/04/2020
Filed: 11/19/2015
STARFISH
Reg: 2682103
Serial: 75628250
Registered And Renewed
Reg: 02/04/2003
Filed: 01/26/1999
029 seafoodDULCICH, INC.
Tavistock Restaurants Upscale Group, LLC043 restaurant and bar servicesTOP CATCH
Reg: 5312613
Serial: 87059055
Registered
Reg: 10/17/2017
Filed: 06/03/2016
TOP CATCH
Reg: 2156853
Serial: 75297283
Registered And Renewed
Reg: 05/12/1998
Filed: 05/23/1997
029 processed seafoodTop Catch, Inc.
Hot Mess, LLC043 cafe and restaurant servicesGIANT
Reg: 5670352
Serial: 88011196
Registered
Reg: 02/05/2019
Filed: 06/22/2018
GIANT
Reg: 3986603
Serial: 77920107
Section 8 & 15 – Accepted And Acknowledged
Reg: 06/28/2011
Filed: 01/26/2010
029 seafoodAHOLD DELHAIZE LICENSING SARL
Urban Roots Brewery, LP043 restaurant servicesURBAN ROOTS
Reg: 5577096
Serial: 87594071
Registered
Reg: 10/02/2018
Filed: 09/01/2017
URBAN ROOT
Reg: 5698383
Serial: 87596331
Registered Reg: 03/12/2019
Filed: 09/05/2017
029 prepared food kits composed of meat, poultry, fish, seafood, and/or vegetables and also including sauces or seasonings, ready for cooking and assembly as a mealBALDOR SPECIALTY FOODS, INC.
Li, Meiling043 restaurant servicesIKKO
Reg: 6033669
Serial: 88627256
Registered
Reg: 04/14/2020
Filed: 09/23/2019
IKKO
Reg: 4001245
Serial: 85088335
Section 8 & 15 – Accepted And Acknowledged
Reg: 07/26/2011
Filed: 07/20/2010
029 seafoodTrue World Holdings LLC
Duke University043 restaurant servicesDUKE
Reg: 5568287
Serial: 87530381
Registered
Reg: 09/25/2018
Filed: 07/17/2017
DUKE
Reg: 2740546
Serial: 78163076
Registered And Renewed
Reg: 07/22/2003
Filed: 09/11/2002
029 seafoodYelin Enterprise Co., Ltd.
CORNER INVESTMENT COMPANY, LLC043 restaurant servicesEATWELL
Reg: 5588828
Serial: 87573326
Registered
Reg: 10/23/2018
Filed: 08/17/2017
EATWELL
Reg: 4638546
Serial: 86191230
Registered
Reg: 11/11/2014
Filed:
02/12/2014
029 seafood, not liveStarkist Co.
Our blog software doesn’t love having images inside of tables, so just imagine that 20% of the records above have logos embedded in the mark or some light textual stylization.

It would be better if the Office considered normal trends instead of just cherry-picking examples, but the case law is what it is, and ThorCheck empowers you to find examples that help you make the case that confusion is unlikely.

We can also do research in Office Actions to find examples of fish/seafood marks overcoming refusals for restaurant services, using a search like this:

This finds some great examples of co-existing registrations, like YOUR FISH! (stylized) for seafood overcoming a prior reg for OUR FISHERMAN, YOUR FISH for restaurant services, ROUNDABOUT for seafood meals overcoming a prior registration for ROUNDABOUT BREWERY for brewpub services, DEEP LOUISIANA FLAVOR for seafood overcoming FLAVORS OF LOUISIANA for restaurant services, BLUE ISLE for seafood overcoming BLUE ISLAND and BLUE ISLAND OYSTER BAR, SKIPPER’S BEST for seafood overcoming prior registrations for SKIPPER’S for restaurants, and many more. These are great for two reasons. First, you can use them like litigators use briefs — to build your best argument on the shoulders of the successes that came before you. Second, you can provide these examples of withdrawn 2(d) refusals to your Examining Attorney to help provide them comfort that they can do as you ask without incurring the wrath of the internal publication review process.

Need more examples? Click on the drop-down by New Search and select Invert Criteria, and see restaurant marks that overcame prior registrations in the seafood space — these are conceptually very similar, and also provide you strong examples.

Mark Differences

There are several types of research we can do on the mark front.

First, we can use TM TKO’s Office Action analysis tool to do automated research for similar marks that overcame 2(d) refusals. It finds that the SURFSIDE registrant in the restaurant space made extensive arguments about co-existence of other SURFSIDE marks in the restaurant space, in trying to argue around prior registrations for SURFSIDE 5 and SURFSIDE 6. The prior registrations were eventually cancelled. While there is no formal prosecution history estoppel doctrine, it certainly doesn’t hurt to point out that the cited registrant thinks that SURFSIDE won’t be confused with other SURFSIDE marks in the restaurant space, much less for packaged seafood!

The Office Action Analysis tool also finds a set of arguments for a still-pending application for Asian-themed seafood meals that has argued against the JSC SURFSIDE SEAFOOD mark, here. These can be a helpful starting point in planning and drafting a response.

Second, we can use ThorCheck to focus on mark-related differences. For JSC SURFSIDE SEAFOOD, the goods are more similar, and the similarity of the marks is the main issue. (This is also a tougher refusal overall.) We’ll want to start with a Term Difference search, and search for “shrimp” with the “Dissimilarity (different owners)” option selected. This will find marks that are otherwise identical or at least share key terms; one has SHRIMP and one doesn’t. This finds example of co-existence like the marks below, where the presence of the generic word “shrimp” nevertheless helps differentiate two marks.

OwnerGoods/ServicesMarkMarkGoods/ServicesOwner
NaturalShrimp Incorporated029 raw shrimp featuring no pesticides, no antibiotics and no chemical additives, grown in self-contained recirculating bio-secure saltwater environmentNATURALSHRIMP
Reg: 6122073
Serial: 88498493 Registered w/ 2(f) claim
Reg: 08/11/2020 Filed: 07/02/2019
MYNATURAL
Reg: 6143014
Serial: 88480582
Registered
Reg: 09/01/2020
Filed: 06/19/2019  
029 fruit-based snack food; prepared nuts; vegetables; dried; jams; fruit chips; frosted fruits; powdered soya milk; vegetable-based snack foodsLIOUX, INC.
CERTI-FRESH FOODS, INC.029 frozen shrimp“SHRIMPLY THE BEST”
Reg: 3526116
Serial: 76494802
Registered And Renewed
Reg: 11/04/2008
Filed: 02/27/2003
BEST
Reg: 4315088
Serial: 85670748
Supplemental Reg.
Section 8 – Accepted
Reg: 04/02/2013
Filed: 07/06/2012  
029 seafoodBest International Trading, Inc.
Bubba Gump Shrimp Co.029 prepared entrees consisting primarily of shrimp for consumption on and off the premisesSHRIMPER’S HEAVEN
Reg: 3394390
Serial: 77197998
Registered And Renewed
Reg: 03/11/2008
Filed: 06/05/2007
HEAVEN SENT
Reg: 5236932
Serial: 87259070
Registered
Reg: 07/04/2017
Filed: 12/06/2016  
029 coconut oil; coconut oil and fat; (…)Exel-Pak, Inc.
Tampa Bay Fisheries, Inc.029 shrimp, not liveSHRIMPLY DELICIOUS Reg: 4649927 Serial: 85957740   Registered Reg: 12/02/2014 Filed: 06/12/2013SO DELICIOUS Reg: 3867331 Serial: 77965368   Section 8 & 15 – Accepted And Acknowledged Reg: 10/26/2010 Filed: 03/22/2010029 non-dairy creamer; processed coconutTurtle Mountain, LLC
LANDRY’S TRADEMARK, INC.029 prepared meals consisting primarily of shrimp and chickenSHRIMPKENS Reg: 3082477 Serial: 78617964   Registered And Renewed Reg: 04/18/2006 Filed: 04/27/2005KEN’S Reg: 1134235 Serial: 73084452   Registered And Renewed Reg: 04/29/1980 Filed: 04/19/1976029 salad dressing, cole slaw dressing, mayonnaise and other dairy, vegetable, fruit, and/or oil based food dressingsKEN’S FOODS, INC.
Schlesser, Robert043 restaurant servicesSHRIMP XPRESS
Reg: 5075372
Serial: 86826974
Supplemental Reg.
Registered
Reg: 11/01/2016
Filed: 11/20/2015
ROE XPRESS
Disclaims: “EXPRESS”
Reg: 5319995
Serial: 86882107
Registered
Reg: 10/31/2017
Filed: 01/21/2016
043 restaurant servicesSo Cal Restaurant Group LLC
RICH PRODUCTS CORPORATION043 providing information about seafood for others, namely, recipes, seafood restaurant reviewsSHRIMPTACULAR
Reg: 4653276
Serial: 85671917
Registered
Reg: 12/09/2014
Filed: 07/09/2012  
SPEGGTACULAR
Reg: 5657635
Serial: 87772562
Registered
Reg: 01/15/2019
Filed: 01/26/2018  
043 restaurant servicesGoufas, Emmanuel
PINNACLE ENTERTAINMENT, INC.043 restaurant servicesSHRIMP-A-PALOOZA
Reg: 5834152
Serial: 88283949
Registered
Reg: 08/13/2019
Filed: 01/31/2019
WING-A-PALOOZA
Reg: 4860445
Serial: 86244730
Registered
Reg: 11/24/2015
Filed: 04/07/2014
043 restaurant servicesPizza Hut, Inc.

Is this going to be enough to turn the tide? It’s not clear — the marks share their most distinctive term, which is always tough even if it’s also suggestive of something about the products.

As always, please don’t hesitate to reach out to us at support@tmtko.com or set up a time to talk via a web meeting if you need a hand with any research projects! We love to help.

Geo-Significant Wording and Your Food Mark

When the USPTO issues an examination guide, it’s usually a big deal for trademark lawyers. The exception that proves the rule is Examination Guide 2-20, Marks Including Geographic Wording that Does Not Indicate Geographic Origin of Cheeses and Processed Meats (May 2020). It hasn’t had much impact.

I. What Does Exam Guide 2-20 Do?

The guide deals with “geo-significant wording,” and three sets of lists of production standards. The first is the FDA’s list of “standards of identity” for cheese – a list of generic standards for cheeses like cheddar, edam, romano, and provolone. The second is the USDA’s list of processed meat names, like frankfurter and bologna. The last is the Codex Alimentarius, organized by the U.N. Food and Agriculture Organization and the WHO, relating to cheese food standards.

Since the standards all relate to production methods and ingredients, not places of origin, the Guide requires Examiners to require disclaimers of “geo-significant” wording, to issue genericness refusals where appropriate, and to ensure that the description of goods contains the listed product in order to avoid a §2(a) deceptiveness refusal, in consultation with the Office of the Deputy Commissioner for Trademark Examination Policy.

II. What’s the Impact of Exam Guide 2-20?

Exam Guide 2-20 has had zero direct impact. It has been directly cited zero times by Examining Attorneys since its introduction. It has been cited zero times by the TMEP. It has been cited zero times by applicants and their counsel.

How about indirect impact? We searched for any of the terms in the three lists that were “geo-significant,” looking for outbound Office Actions (or comparable documents), and found only 24 since May 2020.

The vast majority were simple Examiner’s Amendments, like amending the description of goods for ASIAGO CCFN (stylized) from “cheese” to “asiago cheese,” in accordance with (but without citing to) the Guide; it already disclaimed “asiago.” The rest were additions of disclaimers.

The Office still isn’t catching everything; for example, a registration issued for SUPREME BRIE BITES (stylized) for just “cheese,” when under the Guide it should have been amended to “brie cheese” or something comparable. It’s worth noting that variations of the word will still trigger the requirements; a filing for BRIETTE had its ID amended to “milk products, namely, cheese and cheese preparations in the nature of processed brie cheese, brie cheese sauce and brie cheese food” to comply.

III. How Does This Impact My Practice?

If you represent a client in the food space, and they have a mark that includes a geo-significant term related to cheese or meat, just disclaim the term and be adequately specific in your description of goods, and you can avoid a near-inevitable Office Action.

If you represent a client that thinks it owns rights in one of these geo-significant terms, don’t bother arguing it out with the USPTO — go lobby the US government or the international entities that organize the Codex Alimentarius. That probably won’t work either, but it can’t possibly be less successful than trying to change the Office’s mind.

Update: “Digitally Altered” Specimen Refusals, Applicant Country, and Maintaining a Cleaner Registry

In July 2019, we took a look at “digitally altered” specimen refusals from the PTO. At the time, the Office had only just published its formal guidance on this new issue. In those early days, Chinese applicants were getting plenty of refusals, but generally overcame them pretty well.

This blog post does a deeper dive to see how often Chinese applicants are getting and faring with this refusal, and how those rates compare to US-based applicants. This only looks at the “digitally altered” refusal, not related issues with website specimen inadequacies like insufficient date / URL information. The “digitally altered” refusal is a “tougher” refusal — the Examiner is saying “this looks fake” rather than just “you forgot to include some key details.”

I. How Common are “Digitally Altered” Refusals?

We looked at applications that had digitally altered specimen refusals issued in 2020, broken down goods-classes vs. service-classes refusals. The final counts of the still-pending applications are considerable; whether these end up moving through to registration or going abandoned will make a big difference in assessing the impact of this examination priority. These counts looked at the refusal ratio as a percentage of the overall applications that had use claims at some point in the application; obviously, 1(b) or 44(e)-only or 66(a) applications won’t get this refusal.

Overall, currently or formerly use-based applications in the goods classes are getting a ton more “digitally altered” specimen refusals than specimen-class applications. That makes sense; most service-class specimens are websites anyway, and it’s just as easy to put up a crummy real website that will pass examination muster as it is to mock up a crummy fake website. Refusals of US applications with Chinese applicants were about twice as high as the rate of refusals of applications owned by US-based applicants for goods-based applications (15% vs. 8%) and about 10 times as high for services-based applications (10% vs. 1%). Because use-based applications in the goods classes from Chinese-based applicants actually outnumber such applications from US-based applicants since July 2019, when the USPTO announced this new prosecution focus, this means that almost twice as many these “digitally altered” refusals (by raw number counts) have gone out on applications where the applicant is based in China than to applications where the applicant is based in the US.

II. What Happens After Refusals?

So, what happens once these refusals are issued? A pretty good percentage of the applications that get those refusals are still pending – about 40% of applications from China-based applicants, and about 50% applications from US-based applicants. Of the rest, more applications are “fixing” the issue and getting through to registration, including a slightly higher percentage for China-based applicants overall (though very few of the smaller service-class dataset) than for US-based applicants.

III. Impact of the Rule

So, what is the impact of this rule? It has resulted in the abandonment of almost 6,200 applications from China-based applicants and almost 3,000 applications from US-based applicants. The sheer number of applications going abandoned that would have otherwise moved through to registration with a probably-fake specimen of use is a win for the goal of having a good, clean registry.

Does the rule occasionally impact “good-faith” applicants? Sure! It may cause a bit of inconvenience for a “legitimate” applicant where the goods are shown in a “glamour shots” on a pristine white background, US counsel can help train their clients to provide an appropriate specimen from the outset or in response to the Office Action.

IV. What Else Can Be Done?

Is this sufficient? Hell, no. There are plenty of sketchy specimens (from applicants of all nationalities!) that never generate a refusal, suspicious applications for a random assortment of letters for a list of goods that is very close to a class header, an epidemic of “use claims” that are far more broad than could ever be justified, and a raft of Section 8 and Section 71 claims that are way to broad and get trimmed sharply back every time the USPTO conducts a use claim audit (we blogged about audits in February). I’d love to see aggressive examination of broad use claims and specimens, even if it puts a greater burden on applicants and their counsel. I also believe that a change in the law to allow registrations under 44(e) or 66(a) to be trimmed back to reflect marketplace use essentially immediately after registration, putting them back on more even footing with US applications that claim use for goods or services where there is none, would be a net benefit and give us a cleaner registry. In fact, I’d love to see consequences from over-broad use claims beyond just deletion of the goods that are not in use.

Even if it’s not nearly enough, the digitally altered specimen rule has helped give trademark owners, applicants, and counsel a somewhat cleaner registry that more accurately reflects the real world of US commerce, and that’s a good thing.

Working on the Holidays

Everyone loves a holiday, but, sometimes, work just can’t wait. In honor of our recently-passed Thanksgiving, we took a look at the trademark professionals who are clocking in while everyone else is taking off.

To do this, we looked at three data points: the number of new applications filed, the number of outgoing Office Actions (including requests for reconsideration, etc.), and the number of incoming Office Action Responses (same) to give us a look at both activity by the USPTO and by outside lawyers/the public.

Overall, activity has gone up by quite a lot over time: activity was basically nil in 1990 and 2000, and has risen markedly since 2010.

In 2000, there were only 32 applications with a filing date of Thanksgiving, 0 on Christmas, and two on New Year’s, opposed to an average of 780 per day. By 2019, there were 439 new apps on Thanksgiving, 300 on Christmas, and 223 on New Year’s, versus an average day of 1,355 — a substantial increase.

On the Office Action front, the USPTO has become increasingly active on the holidays, although there is some variability. Christmas 2010 saw a high-water mark of 244 outgoing Office Actions (but Christmas was quieter at 123), 2019 saw 105 on Thanksgiving and 462 on Christmas. New Year’s also had a big change, from 36 in 2010 to 349 in 2019. In general, 2019 was much busier than 2010, with about 1400 outgoing Office Actions per day versus around 800 in 2010.

Office Action Responses also grew over time with each of 2018-2020 seeing between 226 and 255 responses iled on Thanksgiving. Christmas was slower, and New Year’s the slowest of all, with about 2/3 as many responses filed as Christmas or New Year’s. The average number of responses filed per day is much lower than the outgoing documents, and only grew from around 400 per day in 2010 to around 700 per day in 2019.

What did we learn from this? First, Americans are increasingly terrible at taking time off. Part of this is due to the ease of working remotely — something that the Trademark Office has long taken the lead on, but something that has carried over to private practice as well. Second, the Office isn’t too enamored of New Year’s Day. A surprising number of Examiners are deciding to start hitting their quotas for the year right off the bat. Despite it being a holiday, 2020 saw almost 50% of the usual Office Action activity level, and recent years have been north of 20% of normal consistently. No other holiday even approaches that level of activity, although the number of filings on Thanksgiving the last two years got close. International applicants (who don’t have the holiday) are driving a lot of that filing volume, though, so it’s not as focused on US lawyers’ behavior as the Office Action activity.

Have a good one, and, please, take a dang holiday once in a while.

The seasonality of the pumpkin

We all know that pumpkin-related products are far more common on the shelves in the autumn. This quick Friday blog looks at the highly important question: how seasonal are filings for pumpkin-related marks?

Not really very seasonal! That’s a bit surprising, because people care about pumpkins a whole lot less outside of the fall. We looked at filing numbers for both marks that contained PUMPKIN and marks with pumpkin in the description of goods, and compared the overall filings from 2010-20 and filings just in September/October/November of those years.

On the mark front, applications for PUMPKIN marks were very slightly more common in the fall, accounting for 32% of applications. Filings with “pumpkin” in the goods, in contrast, was essentially exactly on par with the rest of the year: 25% of total applications.

There are a few things that could be going on here. First, and probably the key factor, is that many companies offer pumpkin-themed products under their house marks or key products marks, from Starbucks coffee to Special K cereal to Kind bars and many more. These include “pumpkin” or “pumpkin spice” in the descriptive text of the packaging, but not in the mark itself, and so don’t necessitate any other filings. Second, companies often plan ahead, and get applications on file well in advance of a product launch. That “spreads out” applications over the year.

As a final check, we did a quicker search of the COLA registry at the Alcohol and Tobacco Tax and Trade Bureau. As common as pumpkin-y craft beers and flavored spirits are, and since seasonal variants often have different packaging that IS registered, we thought a quick search might show real differences. Nope! Only about 21% of COLA registrations that included “pumpkin” as the brand or fanciful name were filed in the fall months.

Anyway, happy Friday, and enjoy the weekend.

Building a Stack of Evidence for a TTAB Proceeding in TM TKO

Like many of our readers, we nodded along in agreement with the TTAB while reading the most recent Monster Energy opposition decision, Monster Energy Co. v. Cavaliers Hockey Holdings, LLC, Opp. No. 91240680 (TTAB Oct. 6, 2020) (hat tip to John Welch for his tireless blogging) . The Board held that the mark CLEVELAND MONSTERS (stylized) for a variety of merchandised goods was unlikely to be confused with MONSTER for energy drinks and various merch; jewelry, clothing, printed materials, and retail services present in both applications.

While the MONSTER mark was conceptually and commercially strong for beverages, the Board found that marks as a whole were quite different, and the teams’ longstanding use as CLEVELAND MONSTERS mark and its predecessor LAKE ERIE MONSTERS mark for the sports franchise. The considerable evidence of third-party registrations including MONSTER carried quite a bit of weight, finding that MONSTER was conceptually weaker and diluted for other products and services.

This got us thinking about how we’d use TM TKO’s tools to pull together this sort of evidence for a Board proceeding.

First, let’s pull evidence that MONSTER is diluted. The easiest way is a manual search of MONSTER marks by class (14 first, then 25, etc.; sort the results by owner, flag the key ones, and export a summary to Word format and export the TSDR status and title copies for the exhibit using the TSDR export button. Class 14 alone has 8 different owners other than Monster Energy with co-existing marks that included variations of MONSTER as a term. You would then repeat for each class that was at issue.

(You could also pull dilution evidence with a ThorCheck Term Coexistence search, looking for MONSTER in both marks and checking the “include non-exclusive term matches” box. This generates a report showing examples of MONSTER co-existence, with the most similar marks sorted in each class, and the report overall ordered by class.)

Second, let’s pull evidence that adding a term like CLEVELAND is enough to avoid confusion. We can use a ThorCheck Term Difference search, adding CLEVELAND as the term by which two otherwise-similar marks differ. Looking at the relevant classes, we see the CLEVELAND CAVALIERS and VIRGINIA CAVALIERS co-existing in a bunch of classes, plust marks like CLEVELAND AGAINST THE WORLD and DETROIT AGAINST THE WORLD and CLEVELAND BROWNS and BROWNS LONDON in Class 25, CLEVELAND ARMORY vs. THE ARMORY in Class 35, and more. After exporting these results (Word and TSDR), you can repeat for other city names and amass other evidence that consumers are used to a city name + nickname adequately differentiating two marks.

Finally, we can find examples of USPTO Examiners issuing refusals based on the common term MONSTER but letting the junior application through to publication. This obviously isn’t binding on the Board, but it doesn’t hurt to provide examples of other reasoned decisions that reflect your position. A quick manual search of just examples where both the senior and junior marks are still active and the junior mark has been published or registered finds over 100 examples, including more than 30 where the prior cited mark was a single word, as here. If we broaden the search out to those that co-existed at some point in the past but no longer do, we’d certainly find a number of additional examples.

Fiction and Genre – What’s Driving Trademark Filings?

We did some research on the relative commonality of different types of printed fiction over the period 2010-2020, to see if trademark filing trends have varied over the years. Drum roll… they haven’t, really. Filing numbers for types of genre keywords remained incredibly consistent over the years. General terms like “fiction,” “nonfiction,” and “novels” were all extremely popular – no surprise, since the trademark registration process incentivizes applicants to use broad descriptions to claim as much “turf” as possible.

The one big surprise – at least for the author – is how common filings for comics and graphic novels were. It was the single most common specific genre, dwarfing many more traditional categories. To speculate without a whole bunch of concrete evidence, I’d guess that there two things driving this. First, there seem to be more small publishers active in the comics / graphic novels front. Second, more authors in the space may be seeking trademark protection for characters, etc. with an eye towards licensing or merchandising than other genres, given how permeable the membrane between comics and TV/movies have been (at least at the high end). The fact that many comics are sold in a series also makes the registration process simpler compared to novels, where the “single creative work” rule has traditionally made the registration process difficult or unobtainable for authors.

How does this match up with sales figures? Per Book Ad Report, the top fiction genres in order were romance ($1.4b), mystery and sci-fi (between $728m and $590m), then children’s ($160m; not done as a separate category when we ran our numbers) and horror ($79m).

Trademark Filing Trends Among the “Winners”?

This blog post takes a look at how a few top companies that the Financial Times identified as “prospering in the pandemic” have treated their trademark portfolios during since March 2020. For the purposes of this blog post, we’ll just look at new applications in the US and EU. This will almost certainly under-count the final numbers from the March – September time period, since sophisticated companies tend to use “stealth” filings in out-of-the-way jurisdictions to get applications on file and trigger the Paris Convention priority period, but stay under the radar.

Tech titans Amazon, Microsoft, Google, Facebook, Tencent, Nvidia, and Paypal all had a good number of applications in both the US and the EU. Jurisdiction-specific companies like T-Mobile USA primarily had filings in the US, and Pinduoduo and Meituan Dianping (both mainly active in China) didn’t do much in either market. Tesla, Shopify, and Zoom Video all had fewer filings, but rely largely on their strong house marks more than secondary product-level branding.

These numbers aren’t markedly different from the prior year — a little variation, but nothing more than the usual ebb and flow of product launches would suggest. While these companies have been financially successful in riding out the the pandemic from a profits perspective, they haven’t seen a corresponding boom in trademark filings.

Trademark Filings and Sports

Our big summer project has been a set of data expansion projects. While these aren’t live on the production server yet — although they’re coming soon — this blog post provides a little sneak peek at some research into the sports market in the US and Canada. There aren’t any revolutionary findings here: Canadians are way more into hockey and more into rugby and cricket than Americans, but it was still interesting to see the intuition play itself out in the data.

To test the relative interest in the sports, I looked at active, use-based applications or registrations in Class 28 (sporting goods) or 41 (sporting events or training services) in both jurisdictions. The US search criteria was a bit more restrictive, looking only at a keyword in the targeted class. Canada just looked for both the keyword and the class together, although not necessarily the keyword in the class. That difference resulted in the US and Canada having very similar counts, despite the US obviously being the much larger market and trademark registry.

I also really should have included softball in a combined count with baseball, but forgot, and probably should have thrown lacrosse in too, but this post isn’t going to have enough readership to be worth re-doing the numbers.

Soccer, baseball, golf, tennis were pretty comparable in both countries. Basketball and football were relatively more popular in the US, and, as noted above, hockey, rugby, and cricket were proportionately more popular north of the border.

Compare those filing numbers with the “favorite” and “participation” numbers in the US for the major sports from Wikipedia.

SportFavorite
sport[40]
TV viewing
record
(since 2010)1
Major
professional
league
Participants
(millions)[41]
NCAA DI Teams
(Men + Women)
States
(HS)2
American football37%111.9mNFL8.9 m249 (249M + 0W)51
Basketball11%50.4 mNBA30.3 m698 (351M + 349W)51
Baseball/Softball9%40.0mMLB29.3 m589 (298M + 291W)49
Soccer7%27.3mMLS13.6 m531 (205M + 332W)51
Ice hockey4%27.6mNHL3.1 m95 (59M + 36W)15
Golf wasn’t included in the Wikipedia table; other sources estimate ~22m participants in the US.

The other thing that stood out is how weird golf is. It has far, far more filings than its relative popularity as a sport would suggest. Presumably part of this is its “gadgety” nature — the sport requires expensive clubs and balls, and lends itself to the use of lots of training accoutrements. To some extent, money can buy (slightly) better results, and the golfing demographic tends to have some cash to spend. In contrast, a sport like basketball really only requires some shoes and a ball, both of those tend to last a while, and a nice new pair of shoes is going to have more aesthetic than functional impact. The continuing (although less dramatic) need for equipment spend probably buoys the tennis and baseball trademark filing numbers a bit, too. Curiously, while football and hockey are pretty equipment-intensive, they don’t see the same spike in trademark filing. These tend to be more “young men’s games,” with participation rates that quickly drop way down compared to viewing interest. As such, while they might be lucrative to present on TV and drive wind on sports radio talk, they don’t generate the same kind of ongoing gear spend that a more lifelong sport does, and that seems to be reflected in the trademark filing trends.

2019 v 2020 – trademark filing volumes so far & the impact of Chinese-based applicants

A quick-hitting blog post this morning: we ran some numbers on trademark filing volumes at the USPTO in 2020 v. 2019. Despite all the ways in which the world is generally pretty horrible right now, trademark application volumes are increasing — applications from US-based applicants are up a good bit for the year, despite a brief dip in the spring compared to 2019, and applications from non-US applicants are up too.

2019 on the left; 2020 on the right. The last couple of days of USPTO filings in September 2020 won’t be included in the data yet, since they haven’t gotten their initial processing by the Office.

As you might have expected, the foreign part of this is heavily China-driven. From July-September 2020, Chinese applicants accounted for a whopping 79% of USPTO applications filed by non-US applicants.

What does this mean for US law firms? Well, there’s a lot of work out there! The Chinese-based applicants are, for the most part, not relying on traditional, large firms or big IP boutiques. This is a major contrast to applicants from other countries, where larger companies tend to gravitate towards larger US practices.

We took a quick spin through the counsel data for a recent month, and it’s an interesting mix. The most common names were Haoyi Chen at Arch & Lake, Jonathan Morton (at a variety of different firms based in China and Canada), Tony Hom at Daisy IP, Di Li at Di Li Law, PC, William Goldman at Goldman Law Group, Elias Hantula at Hantula & Associates, Adriano Pacifici at Intellectual Property Consulting, LLC, Yan Gao at IPSpeedy Consulting Company LLC, Francis Koh at Koh Law Firm, Yi Wan at Law Office of Yi Wan, Richard Withers at Liu & Associates, and Hao Ni at Ni, Wang & Massand, and Nyall Engfield‘s China offices (no individual attorney listed), Shan Zhu (Shan Zhu Law Group), Kathy Qi Hao at TCW Global Legal Group, Zhihua Han at Wen IP LLC, Jie Luo at Woodruff & Luo, Andrew Morabito at Morabito Law Office, Agnus Ni at AFN Legal, Devasesna Reddy (HM Law Group; uses kafiling.com emails), Elizabeth Yang (Yang Law Offices), Jeffrey Firestone (uses varied emails, generally sealaws.cn or foxmail.com), Yiheng Lou (foxmail.com email), Weibo Zhang (Zhang Law Office), and more. It’s an interesting mix of largely smaller firm, many of whose attorneys have larger firm or USPTO Examiner experience, and, unsurprisingly, Chinese-language skills are the strongest thread.