Author Archives: TM TKO

Results of the TM TKO 2020 Trademark Practice Economic Survey

For the past two weeks, TM TKO ran a survey about how trademark professionals are feeling about their practice in 2020. 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 in 2019, and are looking forward to 2020.

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

50% of respondents practice in groups of 2 to 5 trademark lawyers; the rest were evenly split between solo practitioners and larger groups.

Almost half of respondents were from the east coast, with about 20% each from the west coast and southeast, and a smattering elsewhere. All but a couple of respondents were American lawyers. Of those, about 70% were in large cities, with the rest in small-to-medium size cities.

Expectations for 2020

People felt pretty good about their personal practices and about their firms’ trademark practices – just above 50% felt like their personal practice was improving and 40% felt their firm’s trademark practice was improving (respondents were high achievers, apparently). About 40% expected a similar year, and under 10% expected a worse year or couldn’t guess how the year would go.

US prosecution work was the main growth area for 66% of respondents, with smaller numbers seeing growth in international prosecution, non-litigation disputes, and prosecution. Litigation was a growth area for only 15% of respondents, and a slowing practice area for 20%.

Client relationships remain key – 63% of respondents generate most of their new work from existing clients; domestic referrals are a key for 45% of respondents and international referrals from foreign counsel for 28% of respondents. Respondents’ own business development efforts were only a significant factor for 25% of respondents.

The low level of direct business development efforts maybe isn’t a good thing, though; 45% of respondents listed client acquisition as their single biggest challenge for 2020. Staffing, price pressures and commoditization, technology, and practice costs all had over 20% of respondents worried. Two things generated lower levels of worry: clients paying (17%) and client retention (11%). Once clients are in the door, they tend to both pay their bills and stick around.

Technology

A lot of lawyers changed some of the technology tools that they use for practice in 2019, but seem less inclined to do so in 2020. Search, watch, research, prosecution research, and docketing tools all polled over 25% for 2019; only other research tools (over 50%) cracked the 20% mark for 2020. Respondents were generally enthused about technology improving their practice and its efficiency, although there several respondents comments on technology-adjacent concerns about filing mills and unauthorized practice of law rules.

The USPTO and Its Performance

The good feelings end here. 62% of respondents think the USPTO is doing a worse or much worse job in examination than in recent years, and only one respondent thought it was improving. 66% of respondents said that the USPTO has gotten better at nothing in the last several years; about 20% commended the USPTO on changes for website usability and 10% on improved TTAB decisions. The most common gripes: 40% took issue with examination on 2(d) issues, 30% on 2(e) issues, 45% with website usability, and 45% other prosecution issues. 17% felt there were no negative changes and 10% found that TTAB decisions were getting worse.

The “disastrous implementation” of the domicile and email rules was specifically called out by a number of respondents, as were specimen issues and the problems the USPTO is having keeping the registry clean of marginal use claims (and its spillover onto legitimate applicants).

Travel, Education, and Networking

75% of respondents usually attend the INTA Annual Meeting, by far the most of any meeting. 40% go to an unlisted event, with 20% or fewer going to the INTA Leadership Meeting, the AIPLA Annual Meeting, a state bar annual meeting, or the ABA IP Bar annual meeting.

This year, the travel to Singapore appears to be really hitting INTA attendance, at least among the North American lawyers who responded to this survey. Only 31% said they were attending this year (a 40% drop); anecdotally, people suggested that the costs and travel time commitments are the main reasons for this decision. TM TKO is in this group, too – we are allocating our time and conference budget elsewhere this year. One wonders if potential late-attendee numbers might drop as well, due to the outbreak of the coronavirus in the region. Other conferences had roughly similar numbers.

Conclusion

We hope your trademark practice has a great 2020, and if TM TKO can do anything to help make that a reality, don’t hesitate to contact us.

The Rise of IP Clinics

The USPTO runs a program to allow law school clinics to engage in practice before the Office. It provides law students great practice experience while they are still in law school, and is generally acclaimed as a great success. The Office most recently expanded the roster of IP clinics in 2016-2017, adding twenty law schools in mid-2008. The program also provides for expedited examination, so students can both file and handle and prosecution issues in a single academic semester or quarter.

The Office prepared a 2016 report on clinic activity from 2009-2016. Over those seven years, 2,000 trademark applications were filed by clinics as counsel, and 2,700 students were involved in clinics (both trademark and patent work). The

At TM TKO, we have been getting our set of law clinic users (it’s free for clinical / academic use!) ready for the semester, and the clinic program has been on our mind. So, we ran some updated numbers. These numbers are not going to match the USPTO’s figures from the clinics’ biannual reporting requirements. We do not have access to that data. Instead, our estimates based on the use of email addresses listed in the USPTO’s clinic list. Some clinics will use other emails for their USPTO communications, and our search methodology will not pull in those results. So, don’t get too hung up on specific numbers — this data only shows general trends.

The number of clinic-based filings per year have continued to rise, from the 400-500 range to over 650 last year. Much of that rise appears to be due to the expanded roster of active clinics. There is also a pretty wide range of trademarks being handled, from just a couple per year for some clinics to fifty or more for a couple of very ambitious (and busy) clinics. We don’t have student numbers for each clinic, so it’s impossible to say whether these are just more heavily attended or doing more filings per student.

IP Clinics are providing students valuable opportunities to understand the nuts and bolts of trademark practice and to build client relationship management skills. Both are crucial in running an active IP practice, and the USPTO’s clinical programs are giving today’s law students a great head start on practice that was not available ten years ago.

Participating Law Schools201920182017
American University, Washington College of Law954
Arizona State University Sandra Day O’Conner College of Law614642
Baylor Law School5128
Boston College Law School748
California Western School of Law171617
Fordham University School of Law340
Howard Universtity000
Indiana University Maurer School of Law212412
Indiana University McKinney School of Law001
Lewis & Clark Law School131714
Liberty University School of Law100
Lincoln Law School of San Jose000
New York Law School6100
North Carolina Central University School of Law1268
Northeastern University School of Law1034
Northwestern Pritzker School of Law312122
Roger Williams University School of Law201
Rutgers Law School323
Seattle University School of Law1228
South Texas College of Law Houston262923
Southern Methodist University Dedman School of Law15310
Southern University Law Center310
Suffolk University Law School21015
Syracuse University College of Law71013
Texas A&M University School of Law954
The George Washington University School of Law894
Thomas Jefferson School of Law71613
Tulane University Law School522
UIC John Marshall Law School81314
UNH Franklin Pierce School of Law201313
University of Akron School of Law000
University of Arizona, James E. Rogers College of Law21108
University of California, Irvine School of Law500
University of Connecticut School of Law171521
University of Detroit Mercy School of Law000
University of Idaho College of Law514
University of Maryland School of Law544025
University of Miami School of Law1972
University of Nebraska College of Law1978
University of North Carolina at Chapel Hill School of Law16105
University of Notre Dame Law School13136
University of Pennsylvania Law School2050
University of Puerto Rico School of Law001
University of Richmond School of Law192716
University of San Diego School of Law171516
University of San Francisco School of Law335626
University of St. Thomas School of Law28101
University of Tennesee College of Law141016
University of Washington School of Law6215
Vanderbilt Law School201412
Western New England University School of Law334
Total652528449

What’s in a Brand – Conestoga

Conestoga” is an English word for the Susquehannock people of Pennsylvania, and as such has given its name to a variety of place locations around the US and Canada. However, the word has become best known in association with the Conestoga wagon, a burly hauler first made in a small Pennsylvania town of the same name, used to ship people and goods across rugged terrain as the United States expanded towards the Pacific.

I got curious about the branding cachet of “Conestoga” – it’s clearly something that has a longstanding and good reputation, but it’s also an antiquated item rather than up-to-date technology.

Active / Inactive and Class Breakdown

Int’l Class Registered and activePending and activeInactive and previously registeredInactive and never registered
3001 Avon Products0
7001 Parker Sweeper0
91 Conestoga Wood Specialties000
111 Norman Hoover Welding01 GNI Waterman
1 Hydro-Temp
0
123 Aero Industries
3 Conestoga Wagon Co.
01 Aero Industries
1 Bill Rivers Trailers
1 Richard Hoover
1 Sperry Corp.
1 Annalisa Gojmerac & Francois Dor
1 Carlisle Intangible
1 Conestoga Custom Products
1 Alan Kirk
1 Laverne Owen
1 Space Services
16001 Metropolitan Museum of Art0
18001 Akona Adventure Gear1 Ron Carriere & Charles Lindner
1 TAC Holdings
191 C B Structures000
202 Conestoga Wood Specialties001 Quaker Maid Kitchens
1 Ron Carriere & Charles Lindner
220001 Ron Carriere & Charles Lindner
250001 Davidson Shoe
28001 Conestoga Wagon Works
1 Konestoga Korral Products
0
292 Conestoga Meat Packers000
304 C. H. Guenther & Son LLC001 Pepperidge Farm
310001 Conestoga Energy Partners
1 John W. Eshelman & Sons
330001 W.A. Haller
3501 Conestoga Ceramic Tile Distributors1 Conestoga Steaks1 The Conestoga Group
361 Conestoga Bank
1 Conestoga Capital Advisors
01 Conestoga Capital Advisors
1 Conestoga Family of Funds
3 Conestoga Capital Advisors
1 Paul Trudea
1 The Conestoga Group
371 C B Structures01 C B Structures1 Paul Trudea
38004 Conestoga Enterprises0
390001 Club Conestoga
401 Conestoga Wood Specialties000
421 Conestoga Ceramic Tile Distributors
1 Conestoga Wood Specialties
001 Conestoga Steak House
432 Conestoga Ranch000

The trends in the current trademark registrations are clear: transportation goods (obviously) and construction goods and services (building on the wagons’ rugged reputation) are the most popular, with ranch and food-related services and products following behind. There was also a pair of co-existing registrations in the financial space, again playing on the reputation for ruggedness and timelessness. Historically, those trends generally held, with a few additional more marks playing on the geographic meaning more than the historical wagon meaning scattered in.

Interestingly, several of the current registrations for CONESTOGA are for wagons in Class 12, and owned by the Conestoga Wagon Co. The company makes luxury versions of wagons in the classic Conestoga shape, and extremely nice-looking ones at that. It seems to have encountered no distinctiveness objections under Section 2 during examination, but the registrations seem vulnerable to a challenge on those grounds.

There are an almost never-ending set of concerns for companies when selecting a brand. We hope this dive into the brand impression of the CONESTOGA mark and how companies are using it was informative!

TM TKO: 2020 Trademark Economic & Practice Forecast

TM TKO is compiling data on trademark lawyers’ expectations for the new year. We would love to have your feedback! Topics include the economy and the trademark bar, practice challenges, USPTO performance, and more. All data will be used only in aggregate form, and published for the benefit of the trademark community; your individual response will not be used in any way.

To take the survey, go here.

Your feedback and insights will be shared with the trademark community. Make sure to visit TM TKO’s blog to see the results later this month.

Brands and Bad Things – the Flu

So, I got the flu over the holidays. It’s basically passed me – although it’s not entirely out of the house – and I figured I should at least turn several miserable days into a bit of blog content. I did some research about brands and the flu – not brands for flu PRODUCTS, but brands that include the word FLU or INFLUENZA.

As you would expect, many of these are influenza-related. That more interesting part are probably the non-flu related uses that clearly refer to influenza, and aren’t just coincidental uses of the abbreviation. There were only a handful, and a number included a second word that made the use of FLU a positive comparison, like FLU SHOT. In short: the influenza virus does not have any of the brand cachet that, say, a powerful and ill-tempered animal like a wolverine does. Alas, it’s not build some “bad boy” street cred just by being amazingly destructive — a thing must look stylish in the process. Diseases fall short, and just aren’t that useable as brands.

Some representative marks:

41: A FLU SHOT FOR YOUR HOUSE, pending for germ remediation services.
33: FLU SHOT for booze.
28: FLU-FLU for fishing lure (maybe this has some fishing-related meaning?).
25: FLU for clothing (filed by Fort Lewis College; possibly an acronym of some sort?); FLU GAME for clothing; THE VEGAS FLU for clothing.
18: GIRL FLU for carrying cases.
9, 24, 25: FISH FLU for clothing and such.

The following counts are for active applications or registrations that are focused on flu treatment or prevention, or merchandizing like clothing associated with those treatment or prevention efforts. This is counting by class, and a number of the applications in ancillary classes are by a couple of applicants in the “inform you about the risks of the flu” space. On the whole: as you would expect, most filings are for remedies in Class 5 and medical services in Class 44. There was little specialized medical equipment in Class 10.

3: 1
5: 30
9: 3
10: 2
16: 2
18: 2
25: 5
30: 2
35: 13
36: 3
41: 6
42: 9
44: 22

In conclusion, our considered corporate opinion is: really, don’t get the flu this year. It isn’t fun.

Pictured: the author’s house during the holiday season, 2019

Trademark Business Development Made Easier with TM TKO

For years, TM TKO clients have been using our unlimited trademark watching services for years to identify new potential clients that grow their trademark practices. TM TKO has now simplified the process of setting up business-development-focused watches to find new trademark clients.

I. Find Trademark Clients – Use the “Business” Tab

After you log in, you’ll see a new “Business” tab along the top. This wizard will help you quickly set up watches that will identify unrepresented trademark applicants who could use your help. With pre-set options for new applicants, new Office Action recipients (including the option to limit by issue type), new Notices of Allowance, or various types of abandonments, you can set up and customize an array of business-generating watches in just a few clicks. Make sure to pay attention to the customization advice on that page – there’s more advice on that front below, in this post.

Need something different? Just let us know and we can help you set up the watch that you need.

II. Making the Most out of Business Development Watching – Tips & Tricks

How can you get the most mileage out of business development watching and expand your trademark practice? There are two keys.

II.A. Find Your Audience and Your Pitch to Acquire Trademark Clients

Give potential clients a strong reason to pick your services. Two strategies can be especially successful.

Geography – You like where you live, so connect with others in your city or state who need your help! The option to have face-to-face contact can sway people’s choice of legal counsel, even if you end up communicating primarily or exclusively via email or phone.

Industry – Is there an industry where you have special knowledge? Are you a musician, or do you have deep knowledge in biomedical science, or do you have a background in fashion or retail? Focus your watching on applicants in the International Class or Classes that are most relevant, and stand out by emphasizing your expertise in your outreach.

Language Skills and Foreign Relationships – Targeting foreign applicants can be especially useful if you have strong language skills. Similarly, if you already do a lot of work with foreign counsel from a country or a region, targeting international applicants of the sort you’re already helping – and highlighting your expertise in doing so – can be especially fruitful.

II.B. Be Systematic and Active to Grow Your Practice

Systematic activity is the key – fortunately, it’s not hard to set up a repeatable process that requires little manual effort. TM TKO’s watching sends you a list of business prospects in CSV format every morning, tailored to your ideal client set. You can use either an email service (like Constant Contact, MailChimp, Emma, or EmailOctopus) or a print-and-mail service (like VistaPrint or Click2Mail) to contact these potential clients. You can customize your outreach to the industry or the type of legal issues they are facing, and you can even use intermediaries like Zapier to completely automate your outreach process.

III. Don’t Forget Your Current Clients!

Your best clients are the ones you already have. If you haven’t used Portfolios to set up watching across your existing trademark portfolio already, it’s really simple. In minutes, you can make sure you can protect your clients in several ways, finding:

(1) new applications similar to their marks,
(2) applications that are newly published for opposition that are similar to their marks, and
(3) any new 2(d) citations from the Office citing one of your clients’ marks.

TM TKO gives you a simple way to protect their marks and expand your own dispute-related book of business.

IV. Contact Us!

Trademark business development watching is available with any TM TKO subscription; there are no extra fees. Subscribers get unlimited access to all of our trademark clearance, watch, Office Action research and analytics, and other prosecution tools, too – a great value. If you have any questions about setting up business development or existing-client watches, or have special needs, please reach out to us at support@tmtko.com.

Business Entity Listing data added to Knockout Results

TM TKO is excited to incorporate business entity data into our clearance search reports! To read about how to access this data via our manual search tools, check out our previous post.

Business entity data is presented in its own section of your report. It takes into account entity name and NAICS/SIC codes (translated to international class data) and presents relevant results. Many of the business entities have additional information from third-party sources, like website data, employee info, and more. This business entity information tends to be focused on entities that have a physical location.

Screenshot showing the new business entity data in a search report

You can export business entity data separately from or together with trademark record data to Word or Excel, and export either the full report or just the tagged records.

Updated knockout search export interface

Business entity data is on by default for all new knockout searches, but can be turned off via a checkbox.

We hope you enjoy the new data and additional functionality in our clearance reports!