TM TKO has recently rolled out a significant upgrade to its back end platform. The changes should significantly speed up certain types of searches, especially certain types of manual searches and watches. The new back-end also opens up a lot of options for us from a development perspective.

The first “front-end” upgrade available as a result of these back-end changes is the ability to sort the results of all new manual searches, including via relevance, mark, mark length, mark word count, filing, publication, registration, abandonment, and status dates, attorney, correspondent firm, owner, Examiner, and law office. Find this under “Sort by” in the upper-right corner of your manual search results table. This should be a nice quality-of-life enhancement for your day-to-day searching and diligence projects!

We’re looking forward to all the new enhancements and tools that we can now develop more easily with these back-end upgrades.

While you can see a great concert anywhere, seeing a great show in a great venue that’s seen countless great performances over its years adds to the experience. This blog post looks at what the top 20 venues, per a 2016 list compiled by Consequence Of Sound, have been doing to protect the brands associated with the iconic venues.

Fourteen of the twenty have at least one trademark registration. The most popular class, by far, was Class 41, covering some sort of live music services – the venue itself. The next most popular were food/drink-related classes, like bar services (Class 43 or, in older registrations, 42) and then merchandising, especially clothing in Class 25.

TM TKO is excited to announce two powerful additions to its core ThorCheck™ trademark research tool. The two central factors of the likelihood of confusion analysis are the similarity of the marks and the relationship between the goods and services. ThorCheck “classic” generates registry-based evidence for the goods and services relationship.

The two new additions to ThorCheck bring its powerful comparison engine to bear on questions of mark similarity.  If you represent a junior party, you can use these tools to identify evidence of mark co-existence that can help convince Examiners, counter-parties, or a court that your client’s mark should be able to co-exist with a prior mark. If you represent a senior party, you can find evidence over overlap – that the same company owns multiple marks that contain a single term (Term Coexistence) or that the same company owns marks that differ only (or mainly) by the term you search for (Term Difference). This powerful evidence takes hours to track down manually, but ThorCheck makes the research instantaneous – you can do your best work, and work much more efficiently.

Term Coexistence

Use this tool to find examples of co-existing registrations in the same class that contain both of the relevant terms. For example, if your client’s mark was NIGHT HAWK and the other party’s mark was BRIGHT BIRD, the following search identifies instances where active, use-based registrations containing HAWK coexist on the registry with registrations containing BIRD in the same class.

Results pairs are organized by class. Within a class, these with marks that share another common term prioritized, like the BLACKHAWK vs BLACKBIRD registrations shown below. This search identifies dozens of high-quality matches similar to BLACKHAWK vs BLACKBIRD, plus many, many more “looser” matches.

As with all ThorCheck reports, you can export tagged records via Word to incorporate the summary chart into a draft Office Action Response or other document, or export TSDR status and title copies to make this quality evidence official “of record” in your prosecution history file or TTAB proceeding.

Term Difference

Use the “Term Difference” tool to identify instances where two owners have marks in a single class that differ by a term. The second new tool requires only one input: the term by which they differ. So, if your mark differs from a prior mark largely due to the term PURPLE, you can enter that term and find other instances of co-existing registrations that differ only by this term. Since this tool is prioritizing results that share a common term (whatever that term is), it’s almost impossible to duplicate manually without hours and hours of effort.

The excerpt below shows sample results for the PURPLE search. Results that differ ONLY by the word “purple,” like PURPLE HEAT vs HEAT and PURPLESTAR vs STAR & Design in the example below, are prioritized. The full report identifes dozens of matches.

We can’t wait to see how you use these new ThorCheck options!

With TM TKO’s Office Action research tools, you can easily see how the Examining corps and applicant-side trademark attorneys are using Trademark Trial and Appeal Board decisions.

We will look at a selection of recent precedential decisions from the TTAB and outcomes where Examiners or applicants citing to these decisions. I focused on USPQ citations, which may under-count the decisions slightly, and may miss citations issued right after the cases came out and before a USPQ number is assigned, but it suffices for a quick read of relative citation frequency.

Specimen issues are common but are frequently resolved in prosecution. Even by those standards, applicants citing Minerva have been quite successful.

Specimen issues are common but are frequently resolved in prosecution. Even by those standards, applicants citing Minerva have been quite successful.

Functionality refusals are quite rare – a couple of hundred Office Actions in 2018 to date. It’s little surprise that this March 2018 decision has gotten little traction from either the USPTO’s examining corps or applicants’ counsel so far.

Insignia refusals under Section 2(b) of the Lanham Act are one of the very least common types of refusals, with under 120 in 2018. Most of these relate to US or Swiss flags, so the Welsh insignia here is especially uncommon. An uncommon fact pattern in an overall uncommon refusal has generated only a handful of citations to the case, although respondents referencing it have been relatively successful.

What on earth is going on with the Primrose case, which was first cited almost four months after its issuance and hardly cited to at all for almost a year and a half, and, more recently, is cited constantly? In an October 2017 update, the Trademark Manual of Examination Procedure added references to Primrose to its sections about sophisticated purchasers (1207.01(d)(vii)) and third-party registration and use evidence (1207.01(d)(iii)). The case is often used to support the sophisticated purchaser principal by Examining Attorneys, and applicants’ counsel are especially likely to cite to the latter principal about third-party evidence. The uptick in citations to Primrose occurred recently enough that most of the Office Actions and Responses referring to Primrose haven’t reached a final decision.

How Can You Do This Sort of Research?

If you want to see how other lawyers are effectively referencing key TTAB decisions that you want to use in your own writing, you can sign up for a thirty-day free trial of TM TKO. You’ll get unlimited use of our tools, too: instant, smart search, unlimited watch and 2(d) citation watching, ThorCheck, and other unique research tools.

Today, we’ll take a look at “primarily merely a surname” refusals. Section 1052(e)(4) of the Lanham Act limits registration where the mark is “primarily merely a surname.” TMEP § 1211.01. To make a determination about whether consumers will perceive the mark as primarily merely a surname, the Office will consider:

• (1) whether the surname is rare;
• (2) whether the term is the surname of anyone connected with the applicant;
• (3) whether the term has any recognized meaning other than as a surname;
• (4) whether it has the “structure and pronunciation” of a surname; and
• (5) whether the stylization of lettering is distinctive enough to create a separate commercial impression.

In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-1334 (TTAB 1995). The first and third tend to be the most frequent points of dispute.

Since 2010, the Office has preliminarily refused over 53,000 marks on 2(e)(4) grounds. Just shy of 40% of applications that received this refusal were abandoned prior to publication. The rest resolved the issue in one way or another, resulting in either registrations the Principal Register (~23%), registrations with a 2(f) claim in whole or in part (~15%), registrations on the Supplemental Register (~12% each), or applications that were abandoned after publication (~10%). In all, that’s about half of applications where the mark was accepted as inherently or practically distinctive, and half where the refusal held up.

1. Whether a Term is Rare

Whether a term is “extremely rare” depends on the facts. TMEP 1211.02(b)(i). The Trademark Trial and Appeal Board has found that 456 instances of a surname in the United States were “extremely rare” and unlikely to be perceived as a surname by customers. In re Joint-Stock Company “Baik”, 84 USPQ 2d 1921, 1923 (TTAB 2007). Using TM TKO’s Office Action research tools, it’s quick to find other examples of refusals based on low numbers being overcome, such as HOSS (100 times), AQUARO (a bit more than 100 times), FAUCHER (40 times), and more. Some of these refusals are frankly pretty bad – HOSS, in particular, has an obvious “recognized meaning other than as a surname” and should never have generated a 2(e)(4) refusal.

Strange surname refusals are surprisingly common. ZENGAGE, LONGFRI, MAGOS, VIVINO, JARDINE, and even ADEPTUS generated a surname inquiry (if not outright refusal). The consistency of the surname refusal examination appears to leave something to be desired, especially as applied to foreign terms that are primarily understood as normal words rather than surnames.

2. Whether a Term has a Recognized Meaning other than a Surname

By using TM TKO’s free-text Office Action Response search and TTAB case research, we can identify a few interesting types of “recognized meanings” that the Examining corps has accepted.

– It is a surname, but one that primarily has historical import. See, e.g., a successful Office Action Response for MEDICI, Ser. No. 86724819, a successful Office Action Response arguing that CASSINI suggests the scientist behind a mapping system and not a likely surname of the provider, Ser. No. 85523416, and a successful TTAB appeal for ROMANOV, In re The Hyman Companies Inc., Ser. No. 85483695 (TTAB June 4, 2015) (not precedential). The applicant for VICKERS for gin even successfully argued that a name based on two early 19^th century distillers of the same name was sufficiently historical, Ser. No. 86365318.

– The term is also used as the identifier for a city or geographic region. See, e.g., a successful Office Action Response for STRATTON, Ser. No. 85299672. These arguments are always somewhat funny to me for two reasons. First, they point to potentially different grounds for a 2(e) refusal. Second, the cities or counties (or business names) that applicants are using as evidence tend themselves to be based on or derived from surnames. However, these types of arguments are frequently successful.

– Pointing out that a term is both a surname and a given name is frequently successful, e.g. in responses for HAYDEN’S BAR AND GRILL, Ser. No. 77818198, and a successful response for CONNELLY, Ser. No. 85583934.

Need to do More Research?

If you need more specialized research to overcome a surname refusal, please log in and start searching if you are already a client or sign up for a free trial if not. Either way, please don’t hesitate to reach out to us for any questions or research help.