TM TKO has updated our Office Action research tools! You can now separately search criteria for both the trademark application that got an Office Action and for the criteria of the application that was cited by the Office as a possible bar to registration. This permits even more simple, in-depth research for specific refusal fact patterns.

For a sample, the search below identifies the relatively small number of applications for beer that faced a 2(d) refusal but ultimately made it through to registration. This search focuses on incoming responses that successfully overcame the refusal. This is a longtime bugaboo for prosecution attorneys, who see less overlap in the marketplace than the USPTO precedent recognizes.

The search yields more than eighty examples of applicants who got these sort of 2(d) refusals and ultimately moved to registration, whether due to argument alone, consent agreements, or otherwise. You can then use these as resources to find useful arguments, use select outcomes as examples, and more.

Happy searching!

We have made a couple of updates to ThorCheck to enhance its utility. While ThorCheck has always been limited to active, use-based registrations, the reports previously did not include current status or registration dates. Each of these details has been added to the “Mark” column. The new reports are a bit longer, but have more information that will be useful to a reader who may not have all the background that you the user possess.

As has been the case since last summer, you can immediately export current status and title copies of any tagged records from TSDR via the very creatively-named “TSDR” button in the upper right. If you are submitting evidence to an Examining Attorney or in a TTAB proceeding, this is crucial to make the registration pairs identified via ThorCheck officially “of record” and provide maximum punch.

All TM TKO subscriptions include unlimited watching, and that includes our brand-new 2(d) citation watching tools. Read below to learn why and how to set up 2(d) citation watches. (This post was updated on July 13, 2018 to reflect improvements to the watch setup interface.)

Why use 2(d) Citation Watching?

First, you can do the best possible job protecting your clients. You’ll get a notice when a USPTO Examiner cites one of your client’s applications or registrations against a third party application. This is a key action point, where your client can send a demand letter to “pile on” to the USPTO’s refusal, and often push the applicant for a confusingly similar mark to either drop the application or drop the mark entirely.

Second, you can develop more business from the best customers in the world – your existing clients. Where a client may be cautious about investing attorney time or money to watch for confusingly similar marks in a speculative manner, clients tend to be much more willing to take action on a concrete issue that the USPTO has already identified as likely to cause confusion.

How do you set up 2(d) Citation Watching?

It’s simple! Go to “Watch,” then “New Watch” then “Office Action.” Give your watch a name, and pick a frequency – weekly is probably best to ensure that you can act before the applicant files a response.

The screenshot below shows how you would set up a watch. Under “Office Action Criteria,” pick a “Direction” and select “Outgoing” (to see Office Actions only and not responses), then “Add rule” and add an “Issue Type” with “Section 2(d)” to see citations only.

Then, under “Cited Trademark Criteria,” use “Correspondent Email” or “Attorney of Record” to identify just your clients, or “Correspondent Firm” to see your full firm. If you use “Attorney of Record” and don’t have an extremely uncommon last name, you probably want to select “all” in the drop-down to make sure you only identify your own portfolio.

Finally, if you want to generate a CSV file of the items in the report, just click the option and you’ll get it via email. You can use this data to, for example, automatically generate reporting smart, issue-driven reporting emails to clients.

Get watching! As always, if you have any questions or need setup help, please email us at support@tmtko.com and we would be happy to help.

TM TKO has released manual search tools. The tool supplements our existing automated knockout tools and to allow you to do complex, targeted research.

Accessing Manual Search

To access manual search tools, log and then click “Search” in the toolbar.

TM TKO’s manual search combines structured field-based searching with flexible, Boolean logic that visually displays nested conditions, making even complicated search strategies simple to follow.

Use Cases for Manual Search

Due Diligence

Search by owner, including current owners and prior owners. You can even do separate searches for prior owners that had immediate rights in the mark or those that were “owners” only of a non-present interest, like a security interest or option.

This search identifies active registrations and applications held by a single party:

And this identifies registrations that a company used to own:

Quick Status Checks

TM TKO lets you quickly check on the status of one of your client’s applications or a third-party mark, and take advantage of our reporting tools if you need to save results in a way that you can’t do conveniently using TESS.

Search by Status

Identify applications by their most recent status – outgoing Office Action, inbound Office Action Response, Published, Allowed (or extended), a TTAB status, and more.

Clearance or Analysis

Want to use your own search strategies? No problem! You can still take advantage of complex mark search strategies that our automated clearance search relies on. For instance, “Mark Basic” builds in a variety of search strategies like searching for the exact mark, the mark as a term in other marks, stemmed versions of the mark, pseudo mark, and translation, and phonetically similar marks otherwise that appear to be strong matches.

You can also search by mark “features,” like the presence of a numerical or temporal component, currency, domain name extension, emoticons, and more.

This sample search identifies instances where a filing includes POPCORN and either disclaims the term, has a 2(f) claim, or has a Supplemental Register registration and doesn’t include any of Classes 21 (popcorn machines) or 30 (popcorn) or 31 (unpopped popcorn), or “popcorn” in the description of goods and services. You could use this research to, for example, assess whether a disclaimer would be appropriate.

Business development

It’s simple to zoom in on unrepresented applicants facing issues like an Office Action or a recently abandoned application, or to limit your search to a geographic area for a more personal touch.

The following search will identify either recently-abandoned applications or newly issued Office Actions for unrepresented parties, and focus just on applicants located in Tennessee. This identifies a significant number of local, unrepresented applicants with problems that a trademark attorney could help with.

Start Using TM TKO

Not currently using TM TKO? Subscriptions with unlimited use of all of our searching and watching tools start at $250 per month for one seat. If you have more limited needs or have to have pass-through transactional billing, you can sign up for an unlimited-use daily pass for $75.

Sign up for a free one-month demo here, or contact us with any questions at inquiries@tmtko.com or 206-679-1895.

We have just released two improvements to ThorCheck™ that we’re very excited about.

Similarity searching. You can now use ThorCheck to find evidence that goods or services are related, by finding instances where the same mark is used for both sets of goods or services with the same owner. ThorCheck identifies relevant evidence whether it was in a single registration or in multiple registrations. Since many companies split coverage for a mark in multiple classes into multiple registrations, ThorCheck can save hours of work.

To do a similarity search, just select the option below:

Filing basis options. You also now have an option to either limit your results to Section 1(a) use-based registrations only or to also include non-use-based registrations under Sections 44(e) and 66(a). The former remains the default, as there is TTAB precedent that this evidence is more persuasive, but Section 44(e) and 66(a) registrations paired with evidence of actual use in US commerce can still be useful.

Example search – pizza and sausage. Of course pizza and sausage are related goods, you say, whilst munching on a supreme pizza. If you want to document their relationship more formally in an opposition proceeding, and an Instagram post of your preferred pizza toppings won’t quite be enough, a quick ThorCheck similarity report identifies highly persuasive, registry-based evidence that the goods are related. A screenshot showing the first couple of results is below.

We hope you enjoy the new options!

International Class 5, which includes pharmaceuticals, is one of the most active classes for trademark applications at the USPTO. This blog post looks at some interesting Class 5 filing trends (and interesting marks) for applications filed in the first quarter of 2017.

The Most Common Class 5 Products

What types of products are applicants filing for? Most applications appear to be for easy-to-produce, lightly-regulated products like supplements and vitamins. It makes sense that there would be more of these than development-intensive, highly regulated pharmaceuticals, but the degree to which applications for these goods predominated was surprising.

How are Applicants Filing?

Most applications are filed based on actual use, followed by intent-to-use claims. Foreign priority or registration claims and Madrid Protocol applications lagged well behind.

Where are Applicants Located?

Together, applications from twenty of the largest foreign filers of Class 5 applications amounted to only about 800 applications, or about 16% of all 2017 applications in Class 5. Canada and Switzerland led the way, with China, Japan, Germany, and the UK well ahead of the rest of the pack.

Some Fun Brand Names

Finding good pharmaceutical trademarks is tough work. There are a slew of pending applications and registrations, so clearance is tough, FDA name approval can be difficult, and marketing groups are torn between more suggestive names and completely coined marks. Here are a few of them we enjoyed.