Category Archives: 2(d) Refusals

What Issues Mattered in Trademark Prosecution in 2022?

As a trademark practitioner, you know that not all Office Actions are created equal. If your Office Action just raises an issue with a specimen or a disclaimer request, there may be some back-and-forth with your examining attorney, but the issue will almost certainly get resolved sooner or later. You can get a feel for how likely an issue is to be resolved prior to publication with our Office Action analysis tool and the Examiner analytics it provides.

If, however, you run into a functionality refusal or a likelihood of confusion refusal, you’re likely looking at at least one round of substantive back-and-forth. Applications running into these sorts of refusals move forward to publication at a much lower rate, as we’ve detailed in some prior blog posts.

What sort of refusals, then, did the USPTO tend to issue in 2022? The big ones were:

Substantive Refusals
Likelihood of Confusion	23%
Descriptiveness	18%
Non-Substantive Refusals
Specimen	30%
Classification	25%
Disclaimer	22%
Mark description	14%
Domicile	12%

All numbers are a percentage of times an issue was raised in any Office Action in 2022. Many Office Actions contain multiple issues, so these percentages will not add up to 100%.

Foreign registration-related suspensions and applicant entity clarification requests were present in around 4% of Office Actions each. No other issue exceeded 2% frequency.

A few interesting points arise from this data, particularly the large numbers of non-substantive refusals.

The Office Should Change the Process for Assigning Mark Descriptions. Mark description issues are far more common than I expected. It might be more efficient for the Office to simply assign mark descriptions and allow applicants to object, similar to the process for design codes. That process is highly effective, and applicants rarely push back on the Office’s preferred design coding (or, indeed, the description of the mark phrasing). The change of process would permit some otherwise perfectly acceptable applications from either going abandoned for lack of a response, and speed examination time for almost all of the rest.

Classification Issues Aren’t Going Away. The heavy incentives towards TEAS Plus filing are not enough to eliminate identification woes. While the Office’s ever-widening price gap between TEAS and TEAS Plus is an attempt to mitigate this issue, it can’t solve the whole problem — indeed, it will never solve the issue for any Madrid-based applications. Only further efforts to create a worldwide equivalent of the ID Manual would not only help speed up prosecution in the US, but could address the maddening inconsistencies between what constitutes an acceptable definition goods in various countries. If WIPO could incentivize (e.g. through filing fees) use of such “universally accepted” language, it would be a big improvement for the international trademark system.

Disclaimer Practice is a Drag. Disclaimer requests are really, really common, popping up in over a fifth of Office Actions. Disclaimer practice in the US is riven with inconsistencies; the same term showing up in a short mark will get a disclaimer request; if the mark has a pun in it or if the term is used in a tagline that’s barely any longer, it’ll avoid a disclaimer request. It’s all very silly.

There has to be a better way. A simple, hard-and-fast rule would remove much of this back-and-forth. For example, the Office could adopt a rule that a term that is used in active registrations more than X times (3? 5?) by different owners in a single class is presumptively not likely to cause confusion with another mark, unless there is other evidence of mark similarity like other terms in the mark, visual presentation, etc. That would have two big benefits. First, it would dramatically simplify the confusion analysis. (As a side effect, it would stop the Office from issuing the annoying refusals where 6 companies own registrations for TERMX + SECOND TERM, someone slips through a registration for TERMX alone for narrow goods, and then every subsequent applicant for TERMX + SECOND TERM style marks gets a 2(d) refusal that they have to fight about.) Second, it would obviate the need for disclaimer practice. Just count!

As with mark description issues, some otherwise perfectly fine applications are either going abandoned over disclaimer requests, or have to deal with extra attorney fees to reply (and increased total prosecution time). Neither are a good outcome, and the Office should consider a wholesale revamp of the disclaimer practice to fix it.

Conclusion. Hopefully, we’ve not only given you some insight on the types of issues applicants are running into most often, but also provided some interesting ideas about how the Office could revamp its existing processes to better avoid unnecessary prosecution problems.

Letters of Protest – Interesting Initial Findings

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We’re now starting to index Letter of Protest decisions — the “Letter of Protest Memorandum” responses. These are classified as “Administrative Response (ADR)” as a “Document Type,” under “Office Action Criteria” in manual Search. Occasionally, a Letter of Protest itself makes it into the file for some reason — these are flagged as “Letter of Protest” or “LOP.”

This blog post takes an initial look at some of the more interesting trends that we noticed from some initial research.

A. The Vast Majority are 2(d)-related.

Unsurprisingly, most Letters of Protest decisions (and thus most Letters of Protest) are attempts to keep third-party applications for arguably similar marks. These accounted for 95%+ of the currently-flagged Protest-related content. Of those that had ADR or LOP flags, only about 12% made it through to registration, suggesting that Letters of Protest are extremely effective tools in proactively protecting clients’ trademarks.

B. The Red Cross is Super Active

The Red Cross seems to be filing a bunch of Letters of Protest relating to use of the cross or “plus” designs.

Sometimes, they just point out that the design element might be a “Swiss flag,” e.g. a black and white logo for healthcare cost tracking and insurance apps (abandoned) and a mark for IMMUNITYAID (with the white cross in the red “D”) for dietary supplements (registered; no refusal issued).

In others, they more expressly make a 2(a) claim based on the Red Cross mark. These are often but not always medical related, e.g. compare a G+ mark for surgical equipment (published for opposition) and POWER PLUS for motor oil (still pending, 2(d) refusal unrelated to the Red Cross). Sometimes these do result in 2(d) refusals, like a dove+red cross design for healthcare services (abandoned), or 2(a) refusals, like THRIVE HYDRATION & design (cross in the “t”) for vitamin injection services.

C. Specimen Protests Haven’t Been Especially Common

While most Letters of Protest related to 2(d) refusals, there were a few specimen ones! A number resulted in digitally-altered image refusals, and applications so refused usually went abandoned. Not always, though; some applicants just swapped in a substitute specimen and made it through to registration.

We’ll pay attention to these as the data pool expands. In the meantime, enjoy the new research opportunities!

Assessing a 2(d) Refusal – UNQUESTIONABLY GOOD for hard seltzer

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We like to take a look at interesting 2(d) refusals. They present interesting fact patterns, and they can help us show you how to make the best use of some of TM TKO’s tools.

Today’s Refusal

Today, we are looking at an application filed by Anheuser-Busch for the mark UNQUESTIONABLY GOOD for hard seltzer. It ran into a 2(d) refusal based on a registration for the mark UNQUESTIONABLY ORIGINAL, disclaiming “original,” for beer and beer garden services, owned by District 9 Brewing Company.

The Prosecution History thus far

A-B got an initial refusal in September, filed one round of arguments in March, and got a final refusal on April 7, 2021.

Differences Between the Marks?

A-B argued at length that UNQUESTIONABLY is laudatory, and supports the second words in each mark — and that GOOD and ORIGINAL are quite different. Even though our knockout algorithms emphasize UNQUESTIONABLY quite a lot as a part of the mark, and score UNQUESTIONABLY ORIGINAL as one of the top couple of results, I’m actually very sympathetic to this argument. Because of the differences between the marks, I agree with A-B the consumers wouldn’t confuse the two marks.

The UNQUESTIONABLY ORIGINAL mark is a slogan used by the registrant — a secondary mark paired with its D9 Brewing house mark.

A-B’s real-world use of the mark is also secondary, although not as clear-cut. A-B is using the mark in plain text on their website, e.g. “…, and is filtered five times for an unquestionably good taste.” That’s not even a trademark use, but might cause problems under 2(e)(1) or “failure to function” grounds during specimen examination. The company is also using it with a video series called a “Flavor Journal,” where the “Thirsty Bartenders” vloggers and a guest come up with “Unquestionably Good” food/beverage pairings using Bud Light Seltzer. That’s probably not going to cut it as a specimen of use with the USPTO either.

Nevertheless, it seems to support the idea that neither mark is “primary” on the minds of customers — those are the BUD LIGHT and D9 BREWING marks, or possibly a secondary, beer-specific mark on the D9 side. Alas, the USPTO doesn’t consider this — perhaps examination outcomes would be more consistent and more closely matched with reality if the Office could consider the real-world centrality (or lack thereof) of a mark in its commercial context in the context of considering 2(d) refusals. It makes sense why it doesn’t — a registrant could claim secondary use in prosecution and later expand it — but it still seems like something can be done to improve results.

We took a quick look, via ThorCheck’s Term Coexistence search, at otherwise similar marks that differ in this way — one has ORIGINAL, the other GOOD. There were slim pickings in the beverage classes — SINFULLY GOOD SPIRITS! vs. ORIGINAL SIN was the best we found. Term coexistence examples like this are always a bit chance-based, since two companies have to happen to pick names that differ in exactly this way.

Differences Between the Goods?

A-B is pushing uphill here — the Examining Attorney emphasized evidence that various products use the same mark for both beer and hard seltzer, including A-B’s own Bud Light brand, Michelob Ultra, Corona, and more. Perhaps because of this, A-B did not contest the relationships of the goods in the first Office Action Response. Perhaps, also, A-B did not wish to go on record arguing that two products are not closely related — it wouldn’t want to have that quoted back to it during a later enforcement effort.

We used ThorCheck to do a comparison between “beer” and “hard seltzer.” While there are certainly examples of the same companies providing both under the same or similar marks (more on that shortly), there are also a lot of examples of similar marks co-existing.

Owner	Goods	Mark	Mark	Goods	Owner
Summit Brewing Company	032 beer	SUMMIT BREWING COMPANY Disclaims: “BREWING COMPANY” Reg: 3061467 Serial: 76383607 Registered And Renewed Reg: 02/28/2006 Filed: 03/13/2002	SUMMIT SELTZER Disclaims: “SELTZER” Reg: 6206853 Serial: 88576621 Registered Reg: 11/24/2020 Filed: 08/13/2019	033 hard seltzer	Summit Seltzer Company LLC
DC BRAU BREWING LLC	032 beer	THE CITIZEN Reg: 4169260 Serial: 85374727 Section 8 & 15 – Accepted And Acknowledged Reg: 07/03/2012 Filed: 07/19/2011	CITIZEN SELTZER Disclaims: “SELTZER” Reg: 6171247 Serial: 88730364 Registered Reg: 10/06/2020 Filed: 12/17/2019	033 hard seltzer	Citizen Cider, LLC
Mad Scientists Brewing Partners LLC	032 beer	EXPRESS Reg: 3990176 Serial: 85209319 Section 8 & 15 – Accepted And Acknowledged Reg: 07/05/2011 Filed: 01/03/2011	TROPICAL EXPRESS Disclaims: “TROPICAL” Reg: 6310176 Serial: 88753462 Registered Reg: 03/30/2021 Filed: 01/09/2020	033 hard seltzer	Draught Works, LLC
Vino.com, LLC	032 ale	NECTAR ALES Disclaims: “ALES” Reg: 4295409 Serial: 85664805 Section 8 & 15 – Accepted And Acknowledged Reg: 02/26/2013 Filed: 06/28/2012	NECTAR Reg: 6218762 Serial: 88785906 Supplemental Reg. Registered Reg: 12/08/2020 Filed: 02/05/2020	033 hard seltzer	Divinely Nectar, Inc.
Belliveau, Justin R.	032 beer	GRID CITY BEER WORKS Disclaims: “BEER WORKS” Reg: 6257431 Serial: 87300104 Registered Reg: 01/26/2021 Filed: 01/13/2017	GRID CITY BUBBLE WORKS Disclaims: “WORKS” Reg: 6171375 Serial: 88785058 Registered Reg: 10/06/2020 Filed: 02/04/2020	033 hard seltzer	Grid City Beer Works
Caldera Brewing Company	032 ale	ASHLAND AMBER Disclaims: “AMBER” Reg: 3844351 Serial: 77897387 2(f) claim Registered And Renewed Reg: 09/07/2010 Filed: 12/18/2009	ASHLAND HARD SELTZER Disclaims: “HARD SELTZER” Reg: 6263853 Serial: 88642477 Registered Reg: 02/09/2021 Filed: 10/04/2019	033 hard seltzer	Ashland Beverages, LLC
East Nashville Beer Works, LLC	032 beer	EAST NASHVILLE BEER WORKS Disclaims: “BEER WORKS” Reg: 5070316 Serial: 86764667 Supplemental Reg. Registered Reg: 10/25/2016 Filed: 09/22/2015	NASHVILLE SELTZER Disclaims: “SELTZER” Reg: 5958107 Serial: 88573835 Supplemental Reg. Registered Reg: 01/07/2020 Filed: 08/09/2019	033 hard seltzer	Taylor, Kent C.
Sideways Brewing Company, LLC	032 beer	SIDEWAYS FARM & BREWERY Disclaims: “FARM & BREWERY” Reg: 5885805 Serial: 87385887 Registered Reg: 10/15/2019 Filed: 03/26/2017	#GET SIDEWAYS Reg: 6135704 Serial: 88787476 Registered Reg: 08/25/2020 Filed: 02/06/2020	033 hard seltzer	Islamorada Distilling LLC
The Denver Beer Company, LLC	032 beer	MAUI EXPRESS Reg: 5260511 Serial: 87290760 Registered Reg: 08/08/2017 Filed: 01/05/2017	MAUI HARD SELTZER Disclaims: “HARD SELTZER” Reg: 6044346 Serial: 88681927 Supplemental Reg. Registered Reg: 04/28/2020 Filed: 11/06/2019	033 hard seltzer	Kahu ‘Ohani Inc.

We also took a quick look at overlap — where the same company used the same mark for both beer and hard seltzer, just to assess the strength of the argument. Large brewers make up a lot of the results – A-B has several marks (BUD LIGHT, NATURAL LIGHT, ALOHA BEACHES), ; several smaller brewers also have registrations for both, like Great Divide (WHITEWATER), Craft Brew Alliance (OMISSION), Spruce Street (TWO ROBBERS), Detroit Rivertown (ATWATER), Montauk Bewing (MOUNTAUK). Interestingly, Kahu ‘Ohnana, mentioned above, owns registrations for MAUI BREWING CO. and MAUI HARD SELTZER that co-exist with the MAUI EXPRESS registration noted above.

We also took a look at prosecution histories to attempt to find filings for “hard seltzer” that overcame prior registrations for “beer.” Here is the search to do so, for TM TKO users. This yields a few good examples, including the aforementioned ASHLAND HARD SELTZER vs. ASHLAND AMBER (arguments, including statistically-driven arguments that most beer makers do not make hard seltzer and vice versa*). Also, the search finds some really interesting non-refusals: an A-B registration for SOCIAL CLUB did not receive a citation to some prior registrations for SOCIAL for goods including beer, notwithstanding a Letter of Protest seeking as much. SPYK’D (for hard seltzer) “ran into” a similar non-issued Office Action vs. SPIKE (for beer and booze) — a Letter of Protest was accepted but didn’t generate refusal.

* ThorCheck helps with this type of argument — its charts show that there are over 18,000 active, use-based registrations for beer vs. under 200 for hard seltzer, and only ~10 show overlap in production. Unsurprisingly, the Ashland arguments focused on the percentage of beer producers vs. the percentage of cider producers!

Application Pendency and the USPTO

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The USPTO’s trademark dashboard has a variety of pendency tracking. Despite a deluge of applications, the Office has kept up, by its own metrics: new applications are largely getting examined in the usual ~3 months from filing.

However, our Office Action Analysis tool data suggests that a lot of applications that are running into 2(d) and other substantive refusals are taking longer than usual to come to a final resolution. So, we did a breakdown on application pendency time. There isn’t the time to do a totally comprehensive survey; instead, we looked at how many applications got Office Actions with 2(d) refusals in January of 2020, 2019, 2018, 2017, and 2019 to see how many went abandoned, and how quickly those that went through to publication did so.

2(d) Refusal Rates Over Time

About 20% of all applications got 2(d) refusals in each year. There were no significant changes. Obviously, with the uptick in total filings (roughly double 2009 levels), the total number of refusals is much higher.

The rates at which refused applications went abandoned without ever being published has been pretty steady over time, hovering between 50 – 55%.

Applications with minor issues

When the applicant resolves a 2(d) refusal, how quickly can they do so? In 2009, 29% of refused applications had made it through to publication within ~12 months, 37% by ~18 months, and most of the rest by 24 months. For more recent applications, it’s a very different picture. Applications overcoming a 2(d) refusal within 12 months has dropped to 21-22%, and publication rates within 2 years are down to around 33% of applications. It’s just taking longer to get to similar results.

Why is this? My guess is that the huge application volumes result in a larger registry, and more applications are getting held up on prior pending applications. So, it’s just taking longer to resolve refusals than ever before.

The raw data:

Year	Status	% of Refusals
2020	Pub in 1 year	22%
	Pub in 1.5 years	na
	Pub in 2 years	na
	Pending	40%
2019	Pub in 1 year	22%
	Pub in 1.5 years	28%
	Pub in 2 years	34%
	Pending	7%
2018	Pub in 1 year	21%
	Pub in 1.5 years	29%
	Pub in 2 years	33%
	Pending	3%
2017	Pub in 1 year	22%
	Pub in 1.5 years	37%
	Pub in 2 years	50%
	Pending	0%

Have a great weekend, and a fantastic MLK Day holiday on Monday!

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

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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.

Owner	Goods/Services	Mark	Mark	Goods/Services	Owner
NISHIKI DINER USA, INC.	043 restaurant services	ULTRA 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 live	Sea Farms, Inc.
WE JING INTERNATIONAL CO., LTD.	043 restaurant and bar services	MYFISH Reg: 5556825 Serial: 87532123 Registered Reg: 09/04/2018 Filed: 07/18/2017	MYFISH Reg: 5218513 Serial: 87227227 Registered Reg: 06/06/2017 Filed: 11/04/2016	029 seafood, not live	BUMBLE BEE FOODS, LLC
COMPASS GROUP HOLDINGS PLC	043 restaurant services	COMPASS 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 products	Ocean Garden Products, Inc.
MAMBO MARKS, LLC	043 restaurant services	MAMBO 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 seafood	Quirch Foods Co.
J. CHANG, INC.	043 restaurant and bar services	MIYAKO 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 fish	Mutual Trading Co., Inc.
HEAVENLY VENTURES TRADING LLC	043 restaurant and bar services	CORKSCREW 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 live	Ore-Cal Corporation
Seminole Tribe of Florida	043 restaurant services	FRESH 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 seafood	Trans Family, Inc.
Long, Bart	043 restaurant services	BLUE 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 live	Blue Sea LLC
Lakefront Brewery, Inc.	043 restaurant services	LAKEFRONT 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 seafood	Louisiana Premium Seafoods, Inc.
Starfish Laguna Beach LLC	043 restaurant and bar services	STARFISH 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 seafood	DULCICH, INC.
Tavistock Restaurants Upscale Group, LLC	043 restaurant and bar services	TOP 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 seafood	Top Catch, Inc.
Hot Mess, LLC	043 cafe and restaurant services	GIANT 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 seafood	AHOLD DELHAIZE LICENSING SARL
Urban Roots Brewery, LP	043 restaurant services	URBAN 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 meal	BALDOR SPECIALTY FOODS, INC.
Li, Meiling	043 restaurant services	IKKO 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 seafood	True World Holdings LLC
Duke University	043 restaurant services	DUKE 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 seafood	Yelin Enterprise Co., Ltd.
CORNER INVESTMENT COMPANY, LLC	043 restaurant services	EATWELL 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 live	Starkist 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.

Owner	Goods/Services	Mark	Mark	Goods/Services	Owner
NaturalShrimp Incorporated	029 raw shrimp featuring no pesticides, no antibiotics and no chemical additives, grown in self-contained recirculating bio-secure saltwater environment	NATURALSHRIMP 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 foods	LIOUX, 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 seafood	Best International Trading, Inc.
Bubba Gump Shrimp Co.	029 prepared entrees consisting primarily of shrimp for consumption on and off the premises	SHRIMPER’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 live	SHRIMPLY DELICIOUS Reg: 4649927 Serial: 85957740 Registered Reg: 12/02/2014 Filed: 06/12/2013	SO DELICIOUS Reg: 3867331 Serial: 77965368 Section 8 & 15 – Accepted And Acknowledged Reg: 10/26/2010 Filed: 03/22/2010	029 non-dairy creamer; processed coconut	Turtle Mountain, LLC
LANDRY’S TRADEMARK, INC.	029 prepared meals consisting primarily of shrimp and chicken	SHRIMPKENS Reg: 3082477 Serial: 78617964 Registered And Renewed Reg: 04/18/2006 Filed: 04/27/2005	KEN’S Reg: 1134235 Serial: 73084452 Registered And Renewed Reg: 04/29/1980 Filed: 04/19/1976	029 salad dressing, cole slaw dressing, mayonnaise and other dairy, vegetable, fruit, and/or oil based food dressings	KEN’S FOODS, INC.
Schlesser, Robert	043 restaurant services	SHRIMP 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 services	So Cal Restaurant Group LLC
RICH PRODUCTS CORPORATION	043 providing information about seafood for others, namely, recipes, seafood restaurant reviews	SHRIMPTACULAR 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 services	Goufas, Emmanuel
PINNACLE ENTERTAINMENT, INC.	043 restaurant services	SHRIMP-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 services	Pizza 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

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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.

Results of the TM TKO 2020 Trademark Practice Economic Survey

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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.

Foreign Equivalents Refusals: Examination Outcomes

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This blog post takes a statistical look at the foreign equivalents doctrine, and how it influences examination outcomes in 2(d) refusals. In particular, I wanted to compare refusals where the Examining Attorney based the refusal on the foreign equivalents doctrine against Office Actions that did not raise the foreign equivalents doctrine but did emphasize that one or more terms in the mark are synonyms.

I looked at both 2019 and 2018 data, since so many of the 2019 applications have not made their way to a final decision yet.

Foreign equivalents refusals tend to result in a higher rate of refusals than “synonym” refusals. Roughly 10% more applications that had a foreign equivalents issue raised were refused in 2018 vs. “synonym” refusals. On a much smaller data set, the outcomes are much more closely equivalent in 2019, but outcomes are still worse for applications that receive a foreign equivalent refusal.

It’s also interesting that “synonym” refusals are just less common than “foreign equivalent” refusals – foreign equivalent refusals are about 5x more common than “synonym” refusals. Why? From dipping into specific examples, it appears that a decent percentage of the “synonym” refusals are not focused on the shared term in the mark – they’re the Examiner noting that an additional term, often weaker or descriptive, is essentially synonymous and so not sufficient to differentiate the two marks.

To see if I got different results, I restricted the search to only instances where there was a 1-word mark on each side of the refusal. (This is just space-delimited, so I’m sure it pulls in some compound marks, but it’s close enough.) This dropped the data set dramatically, especially for “synonym” refusals.

I expected the abandonment rates to be higher here, since these are one-word to one-word comparison. It was higher, a bit, for foreign equivalents, but perhaps not as much as I expected – maybe the inclusion of articles in some foreign languages tilted the multi-word comparison rates a bit higher. On the “synonym” refusals, these were if anything overcome at a higher rate than multi-word terms, supporting the hypothesis above that synonym-related refusals are most likely to matter when it is a tacked-on, secondary word (like MVD ANALYSIS vs MVD ASSAY) that is the synonym than a synonym-based comparison of the strongest term in a mark (like BOBCAT vs. LYNX).

Don’t forget to take advantage of TM TKO’s full set of indexed, text-searchable USPTO trademark prosecution histories to find comparable refusals – and successful responses! – for your Office Actions, whether you are facing issues related to foreign equivalents, synonyms, or any other prosecution hurdles.

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Category Archives: 2(d) Refusals

What Issues Mattered in Trademark Prosecution in 2022?

Letters of Protest – Interesting Initial Findings

Assessing a 2(d) Refusal – UNQUESTIONABLY GOOD for hard seltzer

Application Pendency and the USPTO

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

Geo-Significant Wording and Your Food Mark

Results of the TM TKO 2020 Trademark Practice Economic Survey

Foreign Equivalents Refusals: Examination Outcomes